`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 52
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` Entered: November 19, 2014
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`RICOH AMERICAS CORPORATION and XEROX CORPORATION,
`Petitioner,
`
`v.
`
`MPHJ TECHNOLOGY INVESTMENTS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2013-00302
`Patent 7,986,426 B1
`_______________
`
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`

`

`IPR2013-00302
`Patent 7,986,426 B1
`
`
`I. INTRODUCTION
`
`Petitioner, Ricoh Americas Corporation and Xerox Corporation, filed a
`
`Petition requesting an inter partes review of claims 1–11 of U.S. Patent No.
`
`7,986,426 B1 (“’426 Patent”). Paper 1 (“Pet.”). Patent Owner, MPHJ Technology
`
`Investments, LLC, did not file a Preliminary Response, and we instituted inter
`
`partes review of claims 1–11, on two grounds of unpatentability, as listed below.
`
`See Paper 8 (“Dec. on Inst.”).
`
`Subsequent to institution, Patent Owner filed a Substitute Patent Owner
`
`Response (Paper 30, “PO Resp.”), and Petitioner filed a Reply (Paper 39, “Pet.
`
`Reply”). Substantively, Petitioner relies on a declaration by Dr. Roger Melen
`
`(Ex. 1008), and Patent Owner relies on a declaration by Mr. Glenn E. Weadock
`
`(Ex. 2002). The parties requested and appeared at an oral hearing before the panel,
`
`which transpired on August 18, 2014. The record includes a transcript of the
`
`hearing. Paper 51 (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision,
`
`issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, addresses issues and
`
`arguments raised during trial.
`
`For the reasons that follow, we determine that Petitioner has met its burden
`
`of proving, by a preponderance of the evidence, that claims 1–5 and 7–11of the
`
`’426 Patent are unpatentable. Petitioner, however, has not demonstrated by a
`
`preponderance of the evidence that claim 6 of the ’426 Patent is unpatentable.
`
`A. Related Proceedings
`
`According to Petitioner, the ’426 Patent is involved in a declaratory
`
`judgment action, Engineering & Inspection Services, LLC v. IntPar, LLC, No. 13-
`
`0801 (E.D. La., Oct. 10, 2013), and, with related patents, is also the subject of a
`
`consumer protection lawsuit, Vermont v. MPHJ Tech. Investments LLC, No. 282-5-
`
`
`
`2
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`

`

`IPR2013-00302
`Patent 7,986,426 B1
`
`13 (Ver. Sup. Ct., May 2013) (MPHJ filing notice of removal to D. Vt., June 7,
`
`2013 (No. 2:13-cv-00170)). See Pet. 3. The ’426 Patent is related to U.S. Patent
`
`No. 6,771,381, which is also the subject of an inter partes review. See Hewlett-
`
`Packard, Co. v. MPHU Tech. Invs., LLC, Case IPR2013-00309 (PTAB) (“’309
`
`IPR”).
`
`B. The ’426 Patent
`
`The ’426 Patent describes a “Virtual Copier” (VC) system. The system
`
`enables a user to scan paper from a first device and copy an electronic version of it
`
`to another remote device, or integrate that electronic version with a computer
`
`application in the network. See Ex. 1001, Abstract.
`
`According to the ’426 Patent, “VC can be viewed as a copier. Like a copier,
`
`VC takes paper in, and produces paper going out. The only difference is that VC
`
`does not distinguish between electronic and physical paper.” Id. at col. 70, ll. 37–
`
`39.
`
`VC extends from “its simplest form” to its “more sophisticated form”:
`
`In its simplest form it extends the notion of copying from a process
`that involves paper going through a conventional copier device, to a
`process that involves paper being scanned from a device at one
`location and copied to a device at another location. In its more
`sophisticated form, VC can copy paper from a device at one location
`directly into a business application residing on a network or on the
`Internet, or [vice] versa.
`
`Id. at col. 5, ll. 48–55.
`
`The VC includes “five essential modules”: input module, output module,
`
`process module, client module, and server module. “Each module is a counterpart
`
`to an aspect that is found on a conventional copier.” Id. at col. 70, ll. 41–43.
`
`Notwithstanding that the latter sentence refers to each module, the ’426 Patent
`
`ambiguously states that “[t]here is no counterpart to VC’s Server Module on a
`
`
`
`3
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`

`

`IPR2013-00302
`Patent 7,986,426 B1
`
`conventional copier.” Id. at col. 71, ll. 26–27. In any event, the other four
`
`modules have “counterparts” on “conventional” copiers: “The Input Module
`
`manages paper or electronic paper entering VC. . . . The counterpart to VC’s Input
`
`Module on a conventional copier is the scanner subsystem.” Id. at col. 70, ll. 47–
`
`53. “The Output Module manages paper or electronic paper exiting VC. . . . The
`
`counterpart to VC’s Output Module on a conventional copier is the printer or fax
`
`subsystem.” Id. at ll. 54–61. “The Process Module applies processing to the
`
`electronic paper as it is being copied. . . . The counterpart to VC’s Process Module
`
`on a conventional copier is the controller.” Id. at l. 61–col. 71, l. 3. “The Client
`
`Module presents the electronic paper as it is being copied, and any relevant
`
`information related to the input or output functions. . . . The counterpart to VC’s
`
`Client Module on a conventional copier is the panel.” Id. at col. 71, ll. 4–12.
`
`“Unlike conventional copiers, VC’s Server Module is a unique subsystem that can
`
`communicate with the other modules as well as third-party applications.” Id. at
`
`ll. 13–15.
`
`Figure 28 of the ’426 Patent follows:
`
`
`
`
`
`4
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`

`IPR2013-00302
`Patent 7,986,426 B1
`
`
`Figure 28 depicts various peripheral devices networked with a VC. See id.
`
`at Abstract.
`
`C. Illustrative Claims
`
`Of the challenged claims, claims 1–5 and 9–11 are independent. Challenged
`
`claims 1, 5, and 10 follow:
`
`1. A computer data management system including at least one
`
`of an electronic image, graphics and document management system
`capable of transmitting at least one of an electronic image, electronic
`graphics and electronic document to a plurality of external
`destinations including one or more of external devices and
`applications responsively connectable to at least one of locally and via
`Internet, comprising:
`
`
`at least one scanner, digital copier or other multifunction
`
`peripheral capable of rendering at least one of said electronic image,
`electronic graphics and electronic document;
`
`at least one memory storing a plurality of interface
`
`protocols for interfacing and communicating;
`
`at least one processor responsively connectable to said at
`
`least one memory, and implementing the plurality of interface
`protocols as a software application for interfacing and communicating
`with the plurality of external destinations including the one or more of
`the external devices and applications,
`
`wherein the computer data management system includes
`
`integration of at least one of said electronic image, electronic graphics
`and electronic document using software so that said electronic image,
`electronic graphics and electronic document gets seamlessly
`replicated and transmitted to at least one of said plurality of external
`destinations.
`
`
`
`5. A computer data management system including at least one
`of an electronic image, graphics and document management system
`capable of transmitting at least one of an electronic image, electronic
`
`
`
`5
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`

`

`IPR2013-00302
`Patent 7,986,426 B1
`
`
`wherein the software application comprises:
`
`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:
`
`
`at least one scanner, digital copier or other multifunction
`
`peripheral capable of rendering at least one of said electronic image,
`electronic graphics and electronic document;
`
`
`
`at least one memory storing a plurality of interface
`protocols for interfacing and communicating;
`
`
`
`at least one processor responsively connectable to said at
`least one memory, and implementing the plurality of interface
`protocols as a software application for interfacing and communicating
`with the plurality of external destinations including the one or more of
`the external devices and applications,
`
`
`
`at least one input module managing data comprising at
`
`least one of paper and electronic input to the computer data
`management system, and managing said at least one scanner, digital
`copier or other multifunction peripheral, and managing the electronic
`input from at least one third-party software application;
`
`
`
`at least one output module managing the data output from
`the computer data management system, managing at least one imaging
`device to output the data to at least one of a standard windows printer,
`an image printer, and a digital copier, and managing the output of the
`data to the third-party software application;
`
`
`
`at least one process module applying at least one data
`processing to the data comprising the at least one of the paper and the
`electronic input as it is being copied, applying additional functionality
`including at least one of workflow and processing functionality to the
`data comprising the at least one of paper and electronic input as it is
`being copied, and applying multiple processes to a single virtual copy;
`
`
`
`
`
`6
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`IPR2013-00302
`Patent 7,986,426 B1
`
`
`at least one client module presenting the data comprising
`
`the at least one of paper and electronic input as it is being copied, and
`information related to at least one of input and output functions; and
`
`
`
`at least one server module communicable with said at
`least one input, output, client, and process modules and external
`applications, and capable of dynamically combining the external
`applications with at least one of digital capturing devices and digital
`imaging devices.
`
`10. A computer data management system including a server
`
`module comprising:
`
`enable virtual copy operation means for initiating, canceling,
`
`and resetting at least one operation managed by said computer data
`management system;
`
`
`
`maintain list of available module means for maintaining a list of
`input, output, and process modules that can be used in said computer
`data management system, said list being used by at least one module
`object accessible by said server module;
`
`
`
`maintain currently active modules means for maintaining input,
`output, and process modules currently being used for a current
`computer data management system operation in a program object; and
`
`maintain complete document information means for
`
`maintaining information regarding a current file.
`
`
`
`D. References Relied Upon
`
`Petitioner relies upon the following prior art references in this Final
`Decision:
`
`Salgado, U.S. Patent No. 5,872,569 (Feb. 16, 1999) (Ex. 1005);
`
`XEROX CORP., XEROX NETWORK SYSTEMS ARCHITECTURE GENERAL
`INFORMATION MANUAL (1985) (Ex. 1002, “XNS Manual”); and
`
`
`
`
`7
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`

`

`IPR2013-00302
`Patent 7,986,426 B1
`
`
`XEROX CORP., XEROX 150 GRAPHIC INPUT STATION OPERATOR AND
`REFERENCE MANUAL, Parts I and II (1985) (Ex. 1003, “GIS 150 Manual”).1
`
`
`E. The Asserted Grounds
`
`The trial involves the following grounds of unpatentability:
`
`Claims 1–11 as anticipated under 35 U.S.C. § 102(b) by the XNS Manual;
`
`Claims 1–11 as anticipated under 35 U.S.C. § 102(e) by Salgado.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, “[a] claim in an unexpired patent shall be given its
`
`broadest reasonable construction in light of the specification of the patent in which
`
`it appears.” 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice Guide,
`
`77 Fed. Reg. 48756, 48766 (Aug. 14, 2012) (Claim Construction). Under the
`
`
`1 Petitioner refers to the GIS 150 Manual (Ex. 1003) as evidence to show inherent
`features of the Xerox 150 GIS scanner, which is described in the XNS Manual as a
`graphic input station, “Xerox 150 scanner,” and a “Xerox 150 GIS.” See Ex.
`1002, 112, 114; Pet. 13–14 (discussing Ex. 1002 and Ex. 1003). Petitioner
`essentially maintains that because the XNS Manual discloses the GIS 150 scanner
`as part of XNS, the GIS 150 Manual forms a proper evidentiary basis to support
`anticipation by the XNS Manual (for some of the claims). See Pet. 13, n. 11 (citing
`Schering Corp. v. Beneva Pharmaceuticals, 339 F.3d 1373, 1377 (Fed. Cir. 2002),
`18 (quoting Ex. 1002, 112); see also Ex. 1002, 114 (disclosing the “Xerox 150
`GIS”); 135, Fig. 12-8 (“150 Graphic Input Station” “integrat[ed] in the Xerox
`electronic publishing applications.”). Patent Owner does not argue that
`Petitioner’s evidentiary use of the GIS 150 Manual to show inherent features is
`improper. See PO Resp. 21 (“Patent Owner asserts that Petitioner’s reliance on
`GIS 150 does not cure the deficiencies of the anticipation allegation,” because the
`GIS 150 Manual discloses destination “addresses . . . not applications”). On this
`record, under the reasoning and holding of Schering and In re Baxter Travenol
`Labs, 952 F.2d 388, 390 (Fed. Cir. 1991) (extrinsic evidence may be used to
`explain what a reference discloses), using the GIS 150 Manual as evidence to show
`inherent basic features of the GIS 150 scanner, which the XNS Manual discloses as
`an integrated Xerox networked device in XNS, is proper.
`
`
`
`8
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`

`IPR2013-00302
`Patent 7,986,426 B1
`
`broadest reasonable construction standard, claim terms are given their ordinary and
`
`customary meaning, as would be understood by one of ordinary skill in the art in
`
`the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in
`
`the specification with reasonable clarity, deliberateness, and precision. In re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a special
`
`definition or other consideration, “limitations are not to be read into the claims
`
`from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`At least one, at least one of, and related phrases
`
`Claim 1 and most of the other claims recite the phrase “at least one” or “at
`
`least one of” in a number of places. For example, claim 1 recites “at least one of
`
`locally and via the Internet,” and claim 5 recites “at least one input module
`
`managing data comprising at least one of paper and electronic input to the
`
`computer data management system.”
`
`In the Institution Decision, we initially determined that phrases of this type,
`
`“at least one of A and B,” and “at least A and B,” are interpreted in the alternative,
`
`i.e., “one or more A or B.” Dec. on Inst. 14. Petitioner and Patent Owner do not
`
`challenge this interpretation. Patent Owner’s declarant, Mr. Weadock, “do[es] not
`
`take issue” with this interpretation, and agrees that “at least one of A and B” and
`
`“at least A and B” means “in the alternative.” Ex. 2002 ¶ 17.
`
`Software Application/Application
`
`Claims 1 and 5 recite a “software application,” and claim 1 also recites “one
`
`or more of external devices and applications.” Patent Owner contends that an
`
`“application” is “a discrete software program executable on an operating system
`
`for the purpose of accomplishing a task.” PO Resp. 6. Patent Owner also contends
`
`that an “application” and a “software application” do not include “firmware”:
`
`
`
`9
`
`

`

`IPR2013-00302
`Patent 7,986,426 B1
`
`“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.” Id.
`
`Petitioner contends that an “application” “does not exclude firmware (or
`
`even hardware),” and “is not limited to ‘a discrete software program.’” Pet.
`
`Reply 8. The Specification supports Petitioner’s contention. It refers to “an
`
`application (e.g., Lotus Notes, Microsoft Exchange, the Internet, or an electronic
`
`filing system).” Ex. 1001, col. 6, ll. 59–61 (emphasis added). Also, it states that
`
`VC can copy “in and out of devices and business applications (such as Microsoft
`
`Office, Microsoft Exchange, Lotus Notes).” Id. at col. 45, ll. 44–46.
`
`Patent Owner’s contentions imply that an “application” and a “software
`
`application” mean the same thing. See PO Resp. 6–7. This contention renders the
`
`term “software” redundant. The term “application” is not limited to software, as
`
`the disclosed examples of the Internet and electronic filing systems verify. As
`
`another example, in the Institution Decision, we found that the ’426 Patent
`
`Specification “refers to copying from ‘one device and[/]or application to another
`
`device and/or application,’ thereby broadly blurring any distinction between a
`
`device and a device having a software application.” Dec. on Inst. 14 (quoting Ex.
`
`1001, col. 6, ll. 44–46; col. 46, ll. 30–33). In other words, an “application” may
`
`include hardware, software, or software and hardware.
`
`Patent Owner also argues that a “software application” must be “a single
`
`software application.” See PO Resp. 16. The claims do not recite a “single”
`
`software application. Patent Owner does not point the Board to how the ’426
`
`Patent Specification distinguishes “firmware” from stored software that is
`
`distributed as part of a software application. Software must be stored somewhere
`
`typically (i.e., unless it is being transmitted). As Petitioner argues, the
`
`
`
`10
`
`

`

`IPR2013-00302
`Patent 7,986,426 B1
`
`Specification includes “distributed architecture” with the VC software stored
`
`virtually anywhere. See Pet. Reply 8. For example, the Specification states that
`
`“[t]he VC software can reside on a PC, LAN/WAN server, digital device (such as a
`
`digital copier), or on a web server to be accessed over the Internet.” Ex. 1001,
`
`col. 45, ll. 46–48. According further to the Specification, software is stored in
`
`“any multitude or combination of . . . storage devices.” Id. at col. 61, ll. 28–29;
`
`Fig. 15 (depicting system components including memory devices 60, 62, 66, 68,
`
`70, and processor/CPU 58). The processing system can include “processing
`
`system network combinations of the same.” Id. at col. 61, l. 34. The software may
`
`reside on different servers and clients: “Alternatively, the engine object layer and
`
`the engine may be optionally located in a distributed environment on different
`
`machines, servers, and the like.” Id. at col. 66, ll. 65–67.
`
`The “Internet,” and “filing system,” and listed examples of an “application,”
`
`involve a wide variety of distributed software and hardware. The Specification,
`
`therefore, does not preclude an “application” from including hardware and
`
`software, including firmware (software on a device). The ’426 Patent
`
`Specification includes other broad examples: “Accounting systems, like most
`
`business applications, typically have no way of maintaining an electronic copy of
`
`the physical invoice . . . and . . . adding a document management system to an
`
`accounting system is cumbersome . . . and . . . difficult to coordinate.” Ex. 1001,
`
`col. 47, ll. 5–12 (emphasis added). This sentence equates a “system” with an
`
`“application.” Claim 2 recites that “wherein one or more of the external devices
`
`and applications include a printer, facsimile and a scanner.” This further implies,
`
`in line with the ’426 Patent Specification, which includes the Internet or a file
`
`server as an application, that an “application” may include a printer, facsimile, and
`
`scanner hardware, with its associated software.
`
`
`
`11
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`

`

`IPR2013-00302
`Patent 7,986,426 B1
`
`
`The record shows that a “software application” typically must be stored
`
`somewhere to be used by a system. Patent Owner does not explain why the claims
`
`preclude software from being stored as “firmware” and distributed in system-wide
`
`memory. The title of the ’426 Patent is “Distributed Computer Architecture and
`
`Process for Document Management.” The title bolsters the finding that the
`
`disclosed invention contemplates a software application that works in a distributed
`
`manner as a suite of programs, in different machines and on different memory
`
`locations, to accomplish various functions. The ’426 Patent also discloses
`
`combining a processing circuit with “any . . . suitable processing circuits,
`
`including programmable logic devices, such as PALs (programmable array logic)
`
`and PLAs (programmable logic arrays), DSPs (digital signal processors)[,] . . .
`
`ASICs (application specific integrated circuits), VLSIs (very large scale integrated
`
`circuits) or the like.” Id. at col. 61, ll. 58–64. This disclosure further shows that
`
`the invention may include distributed software, including firmware and other
`
`software.
`
`During the hearing, Patent Owner acknowledged that one of the examples
`
`disclosed as an application, “Microsoft Office,” is not a discrete application:
`
`JUDGE TIERNEY: Counsel, can you explain, is Microsoft Office a
`discrete application?
`MR. HILL: No, it’s not, but every time Microsoft Office appears in
`the specification, it appears in a parenthetical that uses the phrase
`“business applications,” plural. So, when you open up that
`parenthetical and you see Microsoft Office, Microsoft Office is an
`embodiment of business applications. It’s PowerPoint, it’s Microsoft
`Word, a person of ordinary skill in the art would readily reconcile
`business applications and Microsoft Office in that parenthetical.
`
`Tr. 27:21–28:4.
`
`The ’426 Patent Specification does not support Patent Owner’s
`
`grammatically-based argument at the hearing. The ’426 Patent Specification refers
`
`
`
`12
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`

`IPR2013-00302
`Patent 7,986,426 B1
`
`to the set of “business applications (such as Microsoft Office, Microsoft Exchange,
`
`Lotus Notes).” Ex. 1001, col. 10, ll. 32–33. It does not refer to each member of
`
`the set, for example, Microsoft Exchange, or Microsoft Office, as comprising a
`
`group of “business applications.”
`
`Mr. Weadock, Patent Owner’s declarant, in forming his opinion that a
`
`software application is a “discrete program,” does not address the broad examples
`
`in the ’426 Patent Specification. See PO Resp. 6 (citing Ex. 2002 ¶ 22). During
`
`his deposition, Mr. Weadock acknowledged that the disclosed software
`
`application, Microsoft Office, constitutes multiple “programs . . . bundled in a
`
`package . . . or . . . suite” of applications. See Pet. Reply 7 (citing Ex. 1013, 42:1–
`
`12, 98:12–23, and discussing Mr. Weadock’s declaration).
`
`Accordingly, a “software application” is a program, or group of programs,
`
`which operate together in a system to perform a function or functions, and the
`
`programs can be stored in a variety of places on a variety of devices, and operate in
`
`a distributed manner. An application may include software and hardware and
`
`performs a function or functions.
`
`Module
`
`Claim 5 recites a software application comprising at least five modules: “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.”
`
`In the Institution Decision, we found that one plain meaning of “module,” is
`
`“a logically separable part of a program.” Dec. on Inst. 16 (citing IEEE 100 THE
`
`AUTHORITATIVE DICTIONARY OF IEEE STANDARDS TERMS SEVENTH EDITION 704
`
`(2000), available at
`
`http://ieeexplore.ieee.org/stamp/stamp.jsp?tp=&arnumber=4116801 (last visited
`
`Sept. 19, 2013).
`
`
`
`13
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`

`IPR2013-00302
`Patent 7,986,426 B1
`
`
`We determined that a “‘module’ . . . is a logically separable part of the
`
`recited software application, and may include another module and may overlap
`
`with another module in functionality.” Dec. on Inst. 18. Petitioner agrees with the
`
`definition, and Patent Owner does not.
`
`We noted that the ’426 Patent states that the modules have “counterparts” to
`
`“aspects” in conventional devices: “Each module [except perhaps a server
`
`module] is a counterpart to an aspect that is found on a conventional copier.” Id. at
`
`3 (quoting Ex. 1001, col. 70, ll. 41–43), 16. As to the sever module, the ’426
`
`Patent Specification states that “[u]nlike conventional copiers, VC’s Server
`
`Module is a unique subsystem that can communicate with the other modules.”
`
`Ex. 1001, col. 48, ll. 27–29 (emphasis added). A unique subsystem need not be a
`
`discrete module.
`
`We also noted that the ’426 Patent states that “[t]he Client module is
`
`generally simply an interface to the Server Module.” Dec. on Inst. 16 (citing
`
`Ex. 1001, col. 49, ll. 30–32). Therefore, we reasoned that because one module
`
`may be within (i.e., an interface thereto) another module, a module may overlap
`
`with another module and may overlap in functionality. See id. This overlap of
`
`module programming code (or its associated function) coalesces with the ordinary
`
`definition, which does not preclude it.
`
`Patent Owner maintains that the Specification provides no support for this
`
`inclusion or overlap. PO Resp. 7 (citing Ex. 2002 ¶ 27). Patent Owner proposes
`
`that a “module” is “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.” Id.
`
`Patent Owner, relying on Mr. Weadock, maintains that this definition “is the
`
`broadest reasonable interpretation in light of the specification.” Id. (citing
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`Ex. 2002 ¶ 30). Mr. Weadock states that this definition constitutes a “more
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`appropriate interpretation of ‘module’ in the context of the ‘426” Patent. Ex. 2002
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`¶ 31. Mr. Weadock cites to the Institution Decision at page 12, where we noted
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`that the ’426 Patent states that “[a]s long as the Input and Output Module conform
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`to the API specified in this document it will plug-and-play with VC.” See
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`Ex. 2002 ¶ 28; Ex. 1001, col. 9, ll. 33–36. Mr. Weadock also bases his opinion on
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`the “fact [that] the ‘426 specification does not disclose one module that includes
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`another, or that overlaps with another.” Ex. 2002 ¶ 27.
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`The record does not support Mr. Weadock’s interpretation. Mr. Weadock’s
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`opinion that there is no support for one module including the other does not
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`address the fact quoted above and in the Institution Decision that the ’426 Patent
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`states that “[t]he Client module is generally simply an interface to the Server
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`Module.” Ex. 1001, col. 49, ll. 30–32. The client module, then, is an interface, or
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`part of the server module. Mr. Weadock’s interpretation also ignores the qualifier
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`in the Specification that is missing from claim 1: “[a]s long as the . . . [m]odule
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`conform[s] to the API specified in this document it will plug-and-play.” Ex. 1001,
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`col. 9, ll. 33–36 (emphasis added). No claim in the ’426 Patent requires a module
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`to conform to the “API specified,” the “‘C’-language API” or “COM-based
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`interface,” as specified in the ’426 Patent Specification. See Ex. 1001, col. 49, ll.
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`39–49. None of the claims, except claims 7 and 8, recite an API or “application
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`programmer interface.” None of the claims recite a “discrete” or “plug-and-play”
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`feature.
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`Patent Owner chose not to limit the claims by qualifying the modules as
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`“discrete” or “plug-and-play.” The ’426 Patent implies that a module, as set forth
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`in the claims, is broader than any specific examples of discrete “plug-and-play”
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`modules. Salgado refers to “discrete modules.” Ex. 1005, col. 3, l. 39. This
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`further implies that skilled artisans would have recognized that the ordinary
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`meaning of a generic module is not limited to discrete “plug-and-play” modules.
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`In essence, a software module has boundaries defined by specific code that
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`produces a specific software function. This generic software module is “logically
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`separable,” because it can be defined by the logic code that produces its function,
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`even if the module cannot be physically extracted from a single memory location
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`as a “plug-and-play” module.
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`Dr. Melen supports this concept of a generic software module defined by its
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`function. During cross-examination by Patent Owner, Dr. Melen, Petitioner’s
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`declarant, testifies that “the word ‘module’ is very broad and very nonspecific, and
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`be comprised of modules and modules of . . . modules, modules spread across the
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`network, modules which include other people’s code.” Ex. 2003, 144:16–20.
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`Dr. Melen similarly testified, when asked about the five modules claimed
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`and disclosed in a related patent having the same Specification as the ’426 patent,
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`that
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`I don’t think . . . module is necessarily one thing. 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. And so the question is, does [the prior art] talk
`about those basic functions of scanning and printing and - - yes. . . .
`It’s just software.
`Ex. 2003, 142:5–15 (emphasis added).
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`Dr. Melen’s testimony is consistent with the ’426 Patent Specification,
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`which defines modules as counterparts to prior art modules–– defined by the
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`function they perform. Another passage in the ’426 Patent implies that in addition
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`to code, module functions may overlap: “[W]hile the above discussion has
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`separated the various functions into separate layers of functionality, the layers may
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`be combined, physically and/or logically, and various functions may be combined
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`together.” Ex. 1001, col. 84, ll. 19–22.
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`Mr. Weadock candidly stated during cross-examination that a module may
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`overlap in code with another module, retreating from statements in his declaration
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`that may have been interpreted as absolutely precluding overlap in modules: “And
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`normally when we talk about modules, we think of them as not overlapping, but
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`there might be situations in which modules could share some code. There might be
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`some common code between two modules.” Ex. 1013, 191:3–7. Mr. Weadock
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`also acknowledged that separate functionality between modules may not be
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`required: “I hesitate to ever make any absolute statements when it comes to
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`software. . . . Because there’s so many different designers and so many different
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`philosophies, but it would - - I can say that it would surprise me to see a modular
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`software application with heavy overlap of functionality between the modules.” Id.
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`at 192:6–15.
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`As Petitioner argues, Mr. Weadock’s declaration does not cite to the ’426
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`Patent Specification for support of a limiting definition of a module, which would
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`require it to be discrete, or plug-and-play. See Pet. Reply 10–11. Petitioner also
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`points out that Mr. Weadock relies on a publication dated about fifteen years after
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`the date of the invention, to support a limiting definition of module. See id. at 4,
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`10. Although Mr. Weadock generally testified during his cross-examination that
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`the concept of a distinction between modular versus monolithic software is well-
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`known, the testimony does not show that in light of the ’426 Patent Specification,
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`it was a well-known distinction at the time of the invention. See Ex. 1013, 191–
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`194. Rather, the testimony shows that both experts agree that at the time of the
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`invention, skilled artisans would have understood that software modules may
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`overlap in code and in function.
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`According to the foregoing discussion, each “module,” as recited in claim 5,
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`does not require a discrete or plug-and-play feature, but each module is a logically
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`separable part of the claimed “software application,” demarcated by code
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`corresponding to the specific function recited for that software module. Each
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`software module may include another software module and overlap with another
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`such module.
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`B. The Hearing
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`During the hearing, Patent Owner acknowledged that the XNS Manual or
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`Salgado disclose the claimed functions with respect to claims 1–5:
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`JUDGE EASTHOM: Can I ask you another question, are you
`contending that those functions [i.e., claims 1–5] are no