`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 35
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` Entered: November 19, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HEWLETT-PACKARD CO.,
`Petitioner,
`
`v.
`
`MPHJ TECHNOLOGY INVESTMENTS, LLC,
`Patent Owner.
`________
`
`Case IPR2013-00309
`Patent 6,771,381 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
`
`
`
`
`

`

`IPR2013-00309
`Patent 6,771,381 B1
`
`
`I. INTRODUCTION
`
`Petitioner, Hewlett-Packard Co., filed a (resubmitted) Petition requesting
`
`inter partes review of claims 1–15 of U.S. Patent No. 6,771,381 (Ex. 1001). Paper
`
`6 (“Pet.”). Patent Owner, MPHJ Technology Investments, LLC, did not file a
`
`(non-required) Preliminary Response, and we instituted inter partes review of
`
`claims 1–15, on two grounds of unpatentability, as listed below. See Paper 9
`
`(“Dec. on Inst.”).
`
`Subsequent to institution, Patent Owner filed a Patent Owner Response
`
`(Paper 20, “PO Resp.”), and Petitioner filed a Reply (Paper 25, “Pet. Reply”)
`
`thereto. Substantively, Petitioner relies on a declaration by Mark Wibbels (Ex.
`
`1005), and Patent Owner relies on a declaration by Glenn Weadock (Ex. 2002).
`
`Patent Owner deposed Mr. Wibbels. Ex. 2003. 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 34 (“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 1–12, 14, and 15 of the
`
`’381 Patent are unpatentable. Petitioner, however, has not demonstrated by a
`
`preponderance of the evidence that claim 13 of the ’381 Patent is unpatentable.
`
`A. Related Proceedings
`
`According to Petitioner, the ’381 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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`

`IPR2013-00309
`Patent 6,771,381 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. 1; Ex. 1016. The ’381 Patent application is a
`
`grand-parent to U.S. Patent No. 7,986,426, which is also the subject of an inter
`
`partes review. See Ricoh Americas Corp. v. MPHH Tech. Invs., LLC, Case
`
`IPR2013-00302 (PTAB) (“’302 IPR”).
`
`B. The ’381 Patent
`
`The ’381 Patent describes a “Virtual Copier” (VC) system. The system
`
`enables a personal computer 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 separate computer application in the network. See Ex. 1001, Abstract.
`
`According to the ’381 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. 71, ll. 62–
`
`65.
`
`The 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. 47–54.
`
`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. 71, l. 66 – col. 72,
`
`l. 1. Notwithstanding that the latter sentence refers to each module, the ’381 Patent
`
`ambiguously states that “[t]here is no counterpart to VC’s Server Module on a
`
`
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`3
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`IPR2013-00309
`Patent 6,771,381 B1
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`conventional copier.” Id. at col. 72, ll. 59–60. 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. 72, ll. 5–13.
`
`“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. 14–23. “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 ll. 24–34. “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 ll. 34–45. “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. 44–47.
`
`Figure 28 of the ’381 Patent follows:
`
`
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`4
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`IPR2013-00309
`Patent 6,771,381 B1
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`
`Figure 28 depicts various peripheral devices attached to a VC on a network.
`
`See id. at Abstract.
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1 and 12–15 are independent. Challenged
`
`claim 1 follows:
`
`1. [1.P] 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 at least one of locally and via
`the Internet, comprising:
`
`
`
`
`[1.1] at least one memory storing a plurality of interface
`
`protocols for interfacing and communicating;
`
`
`
`[1.2] at least one processor responsively connectable to said
`at least one memory, and implementing the plurality of interface
`protocols as a software application for interfacing and
`communicating with the plurality of external destinations
`including the one or more of the external devices and
`applications, wherein said software application comprises at least
`one of:
`
`
`[1.3] at least one input module managing data
`
`comprising at least one of paper and electronic paper
`input to the computer data management system, and
`managing at least one imaging device to input the data
`through at least one of a scanner and a digital copier, and
`managing the electronic paper from at least one third-
`party software applications; and
`
`
`
`[1.4] at least one module communicable with said
`at least one input, output, client, and process modules and
`external applications, and capable of dynamically
`
`
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`5
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`IPR2013-00309
`Patent 6,771,381 B1
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`
`combining the external applications with at least one of
`digital capturing devices and digital imaging devices.
`
`See Pet. 9 (bracketing by Petitioner), 44 (same).
`
`D. The Grounds
`
`
`
`We instituted trial on the following grounds:
`
`Claims 1–15 as anticipated under 35 U.S.C. § 102(b) by SJ5.1
`
`Claims 1–15 as anticipated under 35 U.S.C. § 102(b) by Cotte.2
`
`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. 48,756, 48,766 (Aug. 14, 2012) (Claim Construction). Under the
`
`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).
`
`
`1 HEWLETT PACKARD, HP NETWORK SCANJET 5 SCANNER USER’S GUIDE (2d ed.
`1997) (Ex. 1006).
`2 U.S. Patent No. 5,499,108 (Mar. 12, 1996) (Ex. 1011).
`
`
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`6
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`IPR2013-00309
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`
`At least one, at least one of
`
`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 “[1.2] . . .
`
`wherein said software application comprises at least one of: [1.3] at least one input
`
`module managing data . . .; and [1.4] at least one module communicable with said
`
`at least one input, output, client, and process modules and external applications.”
`
`In our Institution Decision, we interpreted phrases of the type “at least one
`
`of A and B” and “at least A and B” in the alternative, i.e., “one or more A or B.”
`
`Dec. on Inst. 11. The parties do not challenge this interpretation. Patent Owner
`
`agreed with it during the oral hearing, stating that “as Petitioner stated, these are
`
`alternative claim elements. Patent Owner takes no issue with that interpretation,
`
`that either - - that claim element 1.3 [at least one input module] and 1.4 [at least
`
`one module communicable] are claimed in the alternative.” Tr. 31:6–9 (see supra
`
`claim 1). Patent Owner’s declarant, Mr. Weadock, also agrees with this general
`
`construction outlined in the Petition. See Ex. 2002 ¶ 17.
`
`Software Application/Application
`
`
`
`As indicated above, claim 1 recites “said software application comprises at
`
`least one of: at least one input module . . . and at least one module communicable
`
`with” other modules. Claim 1 also recites “one or more of external devices and
`
`applications,” and “external 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”:
`
`“While firmware is made up of software, it is not the same thing as a software
`
`application. Nowhere in the specification of the ‘381 patent is ‘application’ or
`
`‘software application’ used in the context of device firmware.” Id
`
`
`
`7
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`Patent 6,771,381 B1
`
`
`Petitioner contends that Patent Owner’s interpretation is too narrow. See
`
`Pet. Reply 2–3. Petitioner points out that the ’381 Patent describes “‘VC is in one
`
`embodiment . . . optionally a standalone application.’” Pet. Reply 3 (quoting Ex.
`
`1001, col 8, ll. 66–67, emphasis by Petitioner). The Specification supports a
`
`broader interpretation than Patent Owner urges in other places. For example, it
`
`shows specific examples of an application or software application that are not
`
`limited to a discrete software program and do not preclude firmware: “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, VC can copy
`
`“in and out of devices and business applications (such as Microsoft Office,
`
`Microsoft Exchange, Lotus Notes).” Id. at col. 46, ll. 19–20.
`
`Patent Owner essentially contends that an “application” and a “software
`
`application” mean the same thing. See PO Resp. 6–7. This interpretation 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. We
`
`found in the Institution Decision that the ’381 Patent Specification “refers to
`
`copying paper ‘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. 12 (quoting Ex. 1001, col. 6,
`
`ll. 44–46). Claim 8, which depends from claim 1, provides for “integrat[ing]” or
`
`“embedding the computer data management system,” which includes the “software
`
`application,” into an “external application.” This claim 8 phrase further shows that
`
`an application includes hardware. Therefore, based on the disclosure, including
`
`specific examples, an “application” may include hardware, software, or software
`
`and hardware.
`
`
`
`8
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`Patent 6,771,381 B1
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`
`As to a software application, notwithstanding Patent Owner’s arguments,
`
`Patent Owner does not distinguish “firmware” from stored software that is part of a
`
`distributed software application. The Specification includes distributed
`
`architecture with the VC software stored virtually anywhere. 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. 46, ll. 21–24.
`
`Patent Owner also contends that a “software application” means a “single
`
`software application.” PO Resp. 18–19. To support the argument, Patent Owner
`
`reasons that a “software application” precludes “firmware”: “It would not make
`
`sense to say that the firmware of a scanner and host software make up the same
`
`(discrete) software application.” Id. at 19. Contrary to the arguments, the claims
`
`do not recite the word “single” or “discrete,” or otherwise preclude firmware.
`
`
`
`The ’381 Patent Specification also does not support a “software application”
`
`as limited to a “single” or “discrete” software application. Examples of a broader
`
`meaning abound in the ’381 Patent Specification: “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. 51–56. This disclosure equates a “system” with a “business application,” and
`
`implies that the invention allows a “document management system,” including the
`
`software application claimed therein, to coordinate with the existing “accounting
`
`system.”
`
`The ’381 Patent Specification also refers to “Microsoft Office,” Ex. 1001,
`
`col. 53, l. 38, whereas Patent Owner points to “Microsoft Word, Excel and
`
`Outlook,” as examples of single applications. PO Resp. 19. The former example,
`
`
`
`9
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`IPR2013-00309
`Patent 6,771,381 B1
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`Microsoft Office, like the “Internet,” or “filing system,” verifies that a software
`
`application is not limited to a single application. During the oral hearing, Patent
`
`Owner conceded that that “one of ordinary skill in the art would understand that
`
`[Microsoft Office is] . . . as an example as a destination that could include multiple
`
`discrete software applications,” in response to a question by Judge Tierney.
`
`Tr. 26:16–19.
`
`Although Patent Owner relies on its declarant, Mr. Weadock, prior
`
`testimony by Mr. Weadock in unrelated litigation, cited by Petitioner, supports
`
`Petitioner. For example, Mr. Weadock asserted in a declaration that “i[t] is
`
`difficult to define software products according to any specific grouping of files.
`
`Software products are typically defined according to their features.” Ex. 1019, 2
`
`¶ 1. Mr. Weadock also declared that “[a]ttempting to define software as a
`
`particular collection of files is ultimately impossible if code units within the same
`
`file are shared. . . . Attempting to define software strictly as a collection of files is
`
`a fruitless exercise when some of those files perform double duty in different
`
`contexts.” Id. at 6 ¶ 14. Quoting another source, he stated that “‘[y]ou cannot
`
`isolate application code easily anymore.’” Id. (quoting “the director of information
`
`technologies for US Steel Group”). “‘You know, it becomes very difficult to draw
`
`a specific line at which you’ve drawn a boundary between [an] operating system
`
`and application.’” Id. (quoting Scott Vesey, Boeing’s Windows Web Browser
`
`Manager). “Indeed, both industry professionals and computer customers think of a
`
`software product more as that which enables a set of related features than as a
`
`collection of specific files.” Id. at 6 ¶ 15.
`
`Software, according to the ’381 Patent Specification, is stored in “any
`
`multitude or combination of . . . storage devices.” Ex. 1001, col. 62, ll. 43–46; Fig.
`
`15 (depicting system components including memory devices 60, 62, 66, 68, 70,
`
`
`
`10
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`Patent 6,771,381 B1
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`and processor/CPU 58). 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. 68, ll. 17–22. “The 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.” Id. at Abstract. The Abstract verifies that the software can reside on a
`
`device, and does not preclude firmware, as Patent Owner argues.
`
`The title of the ’381 Patent is “Distributed Computer Architecture and
`
`Process for Virtual Copying.” 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 ’381 Patent also discloses “combin[ing] with
`
`any . . . suitable processing circuits, including programmable logic devices, such as
`
`PALs (programmable array logic) and PLAs (programmable logic arrays), DSPs
`
`(digital signal processors) . . . ASIC’s (application specific integrated circuits),
`
`VLSIs (very large scale integrated circuits) or the like.” Id. at col. 63, ll. 10–16.
`
`This disclosure shows that the invention may include distributed firmware.
`
`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 machines, and operate
`
`in a distributed manner. An application may include software and hardware and
`
`performs a function.
`
`Third-party software application/external applications
`
`Claims 1 and 14 recite “managing the electronic paper from at least one
`
`third-party software applications.” In our Institution Decision, we determined that
`
`the terms “third-party software application” and “applications” mean “a program
`
`
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`11
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`Patent 6,771,381 B1
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`that may or may not be on a device.” Dec. on Inst. 12. Patent Owner urges a
`
`narrower construction of a “third-party software application,” and states that it
`
`means “a software application that is provided to the end user by a different
`
`manufacturer.” PO Resp. 7. Patent Owner does not explain how a “different
`
`manufacturer” is involved in claim 1. Mr. Weadock urges that the term implies
`
`“commercially available software made by someone other than the creator of the
`
`computer data management system.” Ex. 2002 ¶ 24.
`
`The Specification refers to “third-party” software as “proprietary” software.
`
`See Ex. 1001, col. 8, l. 11. It also refers to “business applications (such as
`
`Microsoft Office, Microsoft Exchange, Lotus Notes).” See id. at col. 5, ll. 56–57;
`
`col. 46, ll. 19–21. Claims 1 and 14 are drawn to “a computer data management
`
`system,” comprising an input module to manage a “third-party software
`
`application[].” Mr. Weadock and Patent Owner fail to explain how the maker of a
`
`software application has anything to do with the structure of computer data
`
`management system or the third-party software application. Claims 1 and 14 are
`
`system claims, not method claims. The ’381 Patent specifically states that a “third-
`
`party” may create one of the modules of the claimed invention: “The Client
`
`Module can be a GUI that Imagination Software develops, or a third-party
`
`application that directly communicates with the Server Module.” Ex. 1001,
`
`col. 80, ll. 47–49. This verifies that the identification of the programmer who
`
`creates any software that communicates with the claimed “computer data
`
`management system” does not structurally distinguish software made by the maker
`
`of the “computer data management system.”
`
`Similar to “applications,” these related terms (third-party and external) do
`
`not preclude software that resides in printers, scanners, or other devices. An
`
`external application, according to the construction of “application” supra, does not
`
`
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`12
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`preclude hardware, because it includes a file system and the Internet. As also
`
`discussed, the Specification refers to copying paper from “one device and[/]or
`
`application to another device and/or application,” thereby further broadly blurring
`
`any distinction between a device and a device having a software application. Dec.
`
`on Inst. 12 (quoting Ex. 1001, col. 6, ll. 44–46). Further, software, according to
`
`the Specification, as explained above, is stored somewhere in the system, in “any
`
`multitude or combination of . . . storage devices.” Ex. 1001, col. 62, ll. 43–46; Fig.
`
`15 (depicting system components including memory devices 60, 62, 66, 68, 70,
`
`and processor/CPU 58).
`
`Claim 1 requires a system that transmits electronic paper (i.e., “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.” This phrase informs that “external” means at a location remote from
`
`the source that transmits the electronic paper.
`
`Accordingly, the term “third-party software application” means
`
`“programming code that may or may not be on a device.” An “external
`
`application” means software, hardware, or both, at a remote destination, remote,
`
`for example, from the source that transmits electronic paper.
`
`Module
`
`Claim 1 recites a “computer data management system” comprising “at least
`
`one input module,” “at least one module communicable with said at least one
`
`input, output, client, and process modules and external applications.” In the
`
`Decision to Institute, we noted that one plain meaning of “module,” is “a logically
`
`separable part of a program.” Dec. to Inst. 13 (citing IEEE 100 THE
`
`AUTHORITATIVE DICTIONARY OF IEEE STANDARDS TERMS SEVENTH EDITION 704
`
`(2000), available at
`
`
`
`13
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`http://ieeexplore.ieee.org/stamp/stamp.jsp?tp=&arnumber=4116801 (last visited
`
`Sept. 19, 2013)).
`
`We determined that “each ‘module’ . . . is a logically separable part of the
`
`claimed data management system, and a module may include another module and
`
`overlap with another module in functionality.” Id. at 14–15. Petitioner agrees with
`
`the definition, and Patent Owner does not. Pet. Reply 8; PO Resp. 6.
`
`In reaching the construction, we also noted that the ’381 Patent states that
`
`the modules have “counterparts” to “aspects” in conventional devices: “Each
`
`module [except possibly a server module] is a counterpart to an aspect that is found
`
`on a conventional copier.” Dec. on Inst. 3 (quoting Ex. 1001, col. 71, l. 66–col. 72,
`
`l. 1). As to the server module, the ’381 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. 72, ll. 44–47 (emphasis
`
`added). We further noted that “[t]he ’381 Patent also states that ‘[t]he Client
`
`Module is generally simply an interface to the Server Module.’” Dec. on Inst. 13
`
`(quoting Ex. 1001, col. 50, ll. 15–16). Therefore, a module in a software
`
`application may be a “unique subsystem” of that application, and as an “interface”
`
`to another module, may overlap with other modules. See id.
`
`Notwithstanding these disclosures in the ’381 Specification, Patent Owner
`
`maintains that the Specification provides no support for the determination that
`
`modules may include other modules and may overlap in functionality. PO Resp. 7.
`
`Patent Owner states 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. at 8.
`
`Patent Owner cites to its declarant, Mr. Weadock, as support. Id. (citing
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`Ex. 2002 ¶¶ 26, 28–29). Mr. Weadock states that this definition constitutes a
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`“more appropriate interpretation of ‘module’ in the context of the ‘381” Patent.
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`Ex. 2002 ¶ 29. Mr. Weadock cites to the Institution Decision at page 10, where we
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`noted that the ’381 Patent states that “‘[a]s long as the input and output [m]odule
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`conform to the API specified in this document it will plug-and-play with VC.’”
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`See id ¶ 27 (quoting the Institution Decision, which quotes Ex. 1001, col. 9, ll. 35–
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`39).
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`Mr. Weadock’s interpretation ignores the quoted qualifier in the
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`Specification, which is missing from claim 1: “as long as the . . . Module
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`conform[s] to the API specified in this document . . . it will plug-and-play.”
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`Although claim 10 recites a generic “application programmer interface (API).” No
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`claim requires a module to conform to the “API specified,” the “‘C’-language API”
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`or “COM-based interface,” as specified in the ’381 Patent Specification. See Ex.
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`1001, col. 50, ll. 21–34. None of the claims recite the “discrete” or “plug-and-
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`play” 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 ’381 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. In essence, a software module has boundaries defined by specific code
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`that produces a specific software function associated in the claim with the module.
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`This generic software module is “logically separable,” because it can be defined by
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`the logic code that produces its function, even if the module cannot be physically
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`extracted from a single memory location as “plug-and-play” module.
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`Patent Owner also does not address broader implications in the ’381 Patent
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`Specification, including the module counterparts to prior art aspects, the modules
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`as interfaces to each other, or the modules as subsystems. See Ex. 1001, col. 7,
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`l. 67–col. 8, l. 1, col. 50, ll. 15–16, col. 71, l. 66–col. 72, l. 1, col. 72, ll. 44–47; see
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`also Ex. 1005 ¶¶ 35–39 (Mr. Wibbels discussing the disclosed modules, including
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`inconsistent descriptions in the ’381 Patent Specification of the server module, one
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`of the five disclosed modules). The ’381 Patent does not describe these
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`“counterparts” or “subsystems” as discrete modules, and an “interface” to another
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`module implicitly overlaps in code and function with the module for which it
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`interfaces. Therefore, the modules need not be discrete.
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`In the related ’302 IPR, during cross-examination by Patent Owner,
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`Dr. Melen, petitioner (Ricoh’s) witness in that case, testifies that “the word
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`‘module’ is very broad and very nonspecific, and [can] be comprised of modules
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`and modules of mod - - modules, modules spread across the network, modules
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`which include other people’s code.” ’302 IPR, 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 ’381 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.
`Id. at 142:5–15 (emphasis added).
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`Dr. Melen’s testimony is not required to support this claim construction, but
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`we employed the same claim construction in the ’302 IPR. His testimony informs
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`our construction of the same term in the two proceedings––the ’381 Patent and the
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`patent challenged in the ’302 IPR share a common specification.
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`In the ’302 IPR, Mr. Weadock candidly stated during cross-examination that
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`a module may overlap in code with another module, retreating from statements in
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`his declaration that may have been interpreted as absolutely precluding overlap in
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`modules: “And normally when we talk about modules, we think of them as not
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`overlapping, but there might be situations in which modules could share some
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`code. There might be some common code between the two modules.” ’302 IPR
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`Ex. 1013, 191:3–7. Mr. Weadock also acknowledged that separate functionality
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`between modules may not be required: “I would hesitate to ever make any
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`absolute statements when it comes to software. . . . Because there’s so many
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`different designers and so many different philosophies, but it would - - I can say
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`that it would surprise me to see a modular software application with heavy overlap
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`of functionality between the modules.” Id. at 192:6–15. The experts, therefore,
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`agree, that a module may share or overlap in code (which performs the function).
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`Petitioner points to another passage in the’381 Patent that implies that
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`module functions overlap: “[W]hile the above discussion has separated the various
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`functions into separate layers of functionality, the layers may be combined,
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`physically and/or logically, and various functions may be combined together.” Pet.
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`Reply 8 (quoting Ex. 1001, col. 85, ll. 9–12).
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`Petitioner also points out that a book written by Mr. Weadock employs a
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`definition of a “module” that is consistent with the meaning set forth in the
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`Institution Decision: “a logical unit of separation in the application.” Pet. Reply 4
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`(citing Ex. 1020, 1). Implicitly, this definition agrees with ours because code that
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`performs a specific function in an application can be separated as a logical set of
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`code that performs a required function.
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`According to the foregoing discussion, each “module,” as recited in claim 1,
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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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`Claims 8 and 12, certain phrases
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`Claim 8 recites “wherein the one or more of the external devices and
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`applications integrates the computer data management system into an external
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`application via one of running the computer data management system, as an
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`external service and embedding the computer data management system as an
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`embedded service.” Based on the claim language, “one of” refers to running and
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`embedding, and means one of running or embedding. The claim does not define a
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`relative internal system for the “external” application. Claim 8 depends from claim
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`1 and requires that the computer data management system includes a memory and
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`a processor. It is not clear how that hardware portion of the claimed management
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`system can be integrated by means of embedding or running. Accordingly,
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`integrating by one of embedding and running, means that the computer dat