`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 9
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` Entered: November 21, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HEWLETT-PACKARD COMPANY
`Petitioner
`
`v.
`
`
`MPHJ TECHNOLOGY INVESTMENTS, LLC
`Patent Owner
`________
`
`Case IPR2013-00309
`Patent 6,771,381 B1
`_______________
`
`
`Before SALLY C. MEDLEY, MICHAEL P. TIERNEY, and
`KARL D. EASTHOM, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`DECISION
` Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`

`

`Case IPR2013-00309
`Patent 6,771,381 B1
`
`
`I. INTRODUCTION
`
`Petitioner, Hewlett-Packard Company, filed a revised Petition requesting an
`
`inter partes review of claims 1-15 of U.S. Patent No. 6,771,381. Paper 6 (“Pet.”).
`
`Patent Owner, MPHJ Technology Investments LLC, did not file a Preliminary
`
`Response. We have jurisdiction under 35 U.S.C. § 314.
`
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`
`§ 314(a):
`
`THRESHOLD – The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
`
`
`Pursuant to the defined threshold under 35 U.S.C. § 314(a), the Board
`
`institutes an inter partes review of claims 1-15 of the ’381 Patent.
`
`
`
`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., date not listed), and, with related patents, is also the subject of a
`
`consumer protection lawsuit, Vermont v. MPHJ Tech. Investments LLC, No. 282-5-
`
`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 is related to
`
`U.S. Patent No. 7,986,426, which is the subject of another inter partes review,
`
`IPR2013-00302.
`
`
`
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`2
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`Case IPR2013-00309
`Patent 6,771,381 B1
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`
`B. The ’381 Patent
`
`The ’318 Patent describes the “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 ’318 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. 46-52.
`
`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 ’318 Patent
`
`ambiguously states that “[t]here is no counterpart to VC’s Server Module on a
`
`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
`
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`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, reproduced below, represents an embodiment
`
`of VC:
`
`Figure 28 depicts various peripheral devices attached to a Virtual Copier on
`
`
`
`a network. See id. at Abstract.
`
`
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`Case IPR2013-00309
`Patent 6,771,381 B1
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`
`C. Exemplary Claim
`
`Of the challenged claims, claims 1 and 12-15 are independent. Challenged
`
`claim 1 follows:
`
`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 at least one of locally and via
`the Internet, comprising:
`
`
`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 said software application comprises at least
`one of:
`
`
`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 at least one 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.
`
`
`
`
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`
`D. References Relied Upon
`
`Petitioner relies upon the following references:1
`
`Dow, U.S. Patent No. 6,611,291 B1 (Aug. 26, 2003, filed Aug. 7, 1998) (Ex.
`1010);
`
`Cotte, U.S. Patent No. 5,499,108 (Mar. 12, 1996) (Ex. 1011);
`
`HP Network ScanJet 5 Scanner User’s Guide (2nd ed. October, 1997) (Ex.
`1006, “SJ5”);
`
`Technical Support Solutions Guide, HP ScanJet 4Si Scanner (1995) (Ex.
`1007, “SJ4Si”);
`
`HP 9100C Digital Sender User Guide (2nd ed. 2001) (Ex. 1008, “9100C”);
`
`HP LaserJet 3100 Product User’s Guide (1st ed. April 1998) (Ex. 1009
`“HP3100”); and
`
`“HP Introduces Next-Generation Network Scanner” (1997) (Ex. 1015,
`“SJ5PR”).
`
`
`E. The Asserted Grounds
`
`Petitioner asserts the following grounds of unpatentability under 35 U.S.C.
`
`§§ 102 and 103:
`
`Claims 1-15 as anticipated under 35 U.S.C. § 102(b) by SJ5;
`
`Claims 1-12 as anticipated under 35 U.S.C. § 102(a) by SJ4SI;
`
`Claims 1-15 as anticipated under 35 U.S.C. § 102(a) by HP3100;
`
`1 The ’381 Patent claims priority by continuation to U.S. Provisional Application
`60/108,798 (filed November 13, 1998), and by continuation-in-part to several
`provisional applications (filed October 18, 1996). Ex. 1001, col. 1, ll. 7-31.
`However, Petitioner maintains that the Office did not recognize priority to October
`18, 1996. Pet. 3. The Office records, along with the face of the ’381 Patent,
`indicate that November 13, 1998 is the effective priority date. The Board proceeds
`pursuant to that indication.
`
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`Case IPR2013-00309
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`
`
`Claims 1-15 as anticipated under 35 U.S.C. § 102(a) by HP9100C;
`
`Claims 1-15 as anticipated under 35 U.S.C. § 102(e) by Dow;
`
`Claims 1-15 as anticipated under 35 U.S.C. § 102(b) by Cotte;
`
`Claims 1-4, 6, 8, 10, and 14 as anticipated under 35 U.S.C. § 102(b) by
`
`SJ5PR;
`
`Claims 5, 7, 9, 11-13, and 15 as obvious under 35 U.S.C. § 103(a) over
`
`SJ5PR and SJ5. Pet. ii.
`
`
`
`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
`
`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).
`
`The Board construes the following claim phrases and terms:
`
`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
`
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`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”
`
`(emphases added).
`
`The phrase “at least one input module” means “one or more input modules.”
`
`See Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999) (“Use of the phrase
`
`‘at least one’ means that there could be only one or more than one.”). Petitioner
`
`proposes that a related type of phrase, “at least one of A and B,” means “at least
`
`one of A or B.” See Pet. 4. Under some situations, according to Superguide Corp.
`
`v. DirecTV Enters. Inc., 358 F.3d 870, 886 (Fed. Cir. 2004), the plain meaning of
`
`“at least one of A and B” is “at least one of A and at least one of B.” Quoting a
`
`“common treatise on grammar,” Superguide focuses on an example wherein the
`
`preposition “in” precedes a list (i.e., “‘[i]n spring, summer, or winter’ means ‘in
`
`spring, in summer, or in winter’”), and reasons that the phrase “‘at least one of,’
`
`modifies each member of the list, i.e., each category in the list.” Id. (quoting
`
`example in William Strunk, Jr. & E.B. White, The Elements of Style 27 (4th ed.
`
`2000) (brackets from Superguide)). However, Superguide points out that the
`
`specification involved there does not enlarge the scope of the plain meaning, and
`
`reasons that each term in the list embraces a different category, each of which must
`
`take on a chosen value: “Every disclosed embodiment teaches that the user must
`
`choose a value for each designated category.” Id. at 887 (“Importantly, the flow
`
`chart uses a conjunctive criteria list, i.e., the system’s user must choose at least one
`
`value for each designated criteria, or the logic would be inoperable.”).
`
`Accordingly, Superguide has been distinguished on the basis that the normal
`
`conjunctive meaning does not apply when the specification or claims imply a
`
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`broader meaning. See Joao v. Sleepy Hollow Bank, 348 F. Supp. 2d 120, 124
`
`(S.D.N.Y. 2004) (a conjunctive reading of the phrase, “wherein the banking
`
`transaction is at least one of a clearing transaction, a check clearing transaction, an
`
`account charging transaction, and a charge-back transaction,” would be
`
`2
`nonsensical because a single banking transaction cannot be all four).
`
`
`
`Following the principles outlined supra, the claim 1 phrase, “at least one
`
`input module managing data comprising at least one of paper and electronic
`
`paper,” is reasonably broad enough to be read in the alternative. For example, the
`
`phrase encompasses one input module managing data from electronic paper, such
`
`as from a software application. The claims and Specification do not invoke a
`
`conjunctive reading for that phrase or similar phrases. For example, claim 1 does
`
`not reference, necessarily, different categories of paper, or different categories of
`
`electronic paper.
`
`Moreover, the Specification of the ’381 Patent indicates the intent to treat
`
`different inputs and outputs, and perform the other recited functions, in the
`
`alternative, using separate input modules for each type of input, and separate
`
`output modules for each type of output. In other words, at least one or more
`
`modules perform at least one or more of certain functions, and each module is
`
`tailored specifically to one type of device or application:
`
`
`2 At least one practitioner describes an established contrary view of the plain
`meaning prior to Superguide, which published after the earliest possible effective
`filing date of the ’381 Patent: “It is therefore better practice to avoid the word ‘or.’
`Several accepted techniques for doing this were developed in the past. One was to
`recite ‘at least one of element A and element B,’ which is equivalent to ‘or’ but
`avoids the troublesome word itself.” Allen Wood, Drafting Patent Claims for use
`in the United States in Mechanical and Electrical Cases, at 23 (2003),
`http://www.awoodpatents.com/claims_booklet_(rev._nov_28__03).pdf.
`
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`
`[I]n order to support outputting to a third-party application, an Output
`Module is developed that is unique to that third-party application.
`Likewise, an Input Module is developed that is unique to a third-party
`application in order to support reading images from that application.
`It is the optional Input and Output Modules that render VC
`extendable. For each third-party application there is a unique pair of
`Input and Output Modules that understand the third-party application,
`and how to copy images to and from that application. . . . In this
`way[,] Virtual Copier can grow indefinitely, to support any number of
`third-party applications.
`
`The significant point is that the Input and Output Modules have
`their own interface, and can be developed independently from any
`other module. As long as the input and output Module conform to the
`API specified in this document it will plug-and-play with VC. VC
`will be able to mix and match the custom Input and Output Module
`with its standard and other custom Input and Output Modules.
`
`Ex. 1001, col. 9, ll. 19-39.
`
`Other examples refer to modules and their functions in the alternative: “The
`
`Input Module manages paper or electronic paper entering VC. This module
`
`manages imaging devices to input paper through, scanners, MFPs, or the new
`
`breed of digital copiers. The Input Module also manages reading electronic paper
`
`from third-party or proprietary applications.” Id. at col. 8, ll. 6-11 (emphases
`
`added). The Specification also states that the Virtual Copier’s “GO button can
`
`copy paper, whether physical or electronic, from one device and[/]or application to
`
`another device and/or application.” Id. at col. 6, ll. 44-46. In other words, the
`
`Specification consistently reveals an intent to treat choices alternatively, and in
`
`some cases, blurs distinctions, by grouping “and” and “or” together.
`
`Accordingly, the claim 1 phrase, “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
`
`
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`paper from at least one third-party software application,” is interpreted to embrace
`
`one or more input modules each managing one or more of the recited functions.
`
`The managing functions may overlap.
`
`Claim 1 also recites the phrase “at least one 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.” The phrase reasonably
`
`requires the “at least one module” to be communicable with at least one input
`
`module, output module, client module, or process module, or external applications.
`
`As noted, the term “at least one” means “one or more,” and the preposition “of” is
`
`not recited in this claim phrase, unlike the claims at issue in Superguide. Hence,
`
`the above-listed phrase in claim 1 means one or more modules communicable with
`
`one or more input, output, client, or process modules, or external applications.
`
`The Specification supports the interpretation, by stating that the server
`
`module functions to create a variety of systems in the alternative, as follows:
`
`Server Module-Unlike conventional copiers, VC’s Server
`Module is a unique subsystem that can communicate with the other
`modules as well as third-party applications. . . . A virtual copier can
`be created with VC by combining a scanner with a printer, or by
`combining a scanner with an application; or by combining an
`application with an image printer. . . . There is no counterpart to VC’s
`Server Module on a conventional copier.
`
`Ex. 1001, col. 8, ll. 44-60.
`
`In general, phrases of the type “at least one of A and B,” appear throughout
`
`the claims and Specification, usually in terms of functions performed by “one or
`
`more modules.” Based on the foregoing discussion, unless otherwise noted, at this
`
`juncture, phrases of the type discussed here, “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.”
`
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`
`Third-party software application
`
`The terms “third-party software application,” or “applications,” recited in
`
`claim 1, and other claims, do not preclude software that resides in printers,
`
`scanners, or other devices. 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. The Specification also refers to copying
`
`paper “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. See id. at col. 6, ll. 44-46. Therefore, the terms mean a
`
`program that may or may not be on a device.
`
`Managing
`
`Claim 1 requires that the input module manages data. The Specification
`
`does not specify what “managing,” in the context of data, means. Managing may
`
`include “conventional copier . . . scanner subsystem” commands. See id. at col. 8,
`
`ll. 13-14. In other words, managing may require receiving or transferring the data,
`
`and possibly, but not always, transforming the data to conform to a specific format.
`
`As noted in the discussion of the phrase “at least one of,” some disclosed modules
`
`are tailored as a specific plug-and-play modules, indicating that each module may
`
`perform a custom transform function. See also Ex. 1001, col. 9, ll. 22-24 (input
`
`module “is unique to a third-party application in order to support reading images
`
`from that application”). Therefore “managing” means sending or employing
`
`signals to facilitate receiving or transmitting data, or transforming data, or both.
`
`Module
`
`Claim 1 recites a “computer data management system” comprising “at least
`
`one input module,” “at least one module,” and “at least one input, output, client,
`
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`and process modules and external applications.” Petitioner does not propose a
`
`definition for “module.”
`
`One plain meaning of “module” is “[a] distinct and identifiable unit of a
`
`computer program for such purposes as compiling, loading, and linkage editing.”
`
`MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 1285 (5th Ed.
`
`1994) (Ex. 3001). Another plain meaning of “module,” which is similar, but
`
`broader slightly, is “a logically separable part of a program. Note: The terms
`
`‘module,’ ‘component,’ and ‘unit’ are often used interchangeably or defined to be
`
`sub-elements of one another in different ways depending upon the context. The
`
`relationship of these terms is not yet standardized.” 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).
`
`As noted supra, the ’381 Patent states that input and output modules are
`
`unique to each third-party printer or scanner application, and “understand the third-
`
`party application, and how to copy images to and from that application.” Ex. 1001,
`
`col. 49, ll. 59-61. The ’381 Patent also states that “[t]he Client Module is generally
`
`simply an interface to the Server Module.” Id. at col. 50, ll. 15-16. As also noted
`
`supra, the modules also have “counterparts” in prior art copier or scanner systems.
`
`In other words, modules may include other modules and may overlap in
`
`functionality.
`
`In addition, the ’381 Patent states that the modules all “support COM-based
`
`interfaces for simple and direct support from all major Windows development
`
`environments.” Ex. 1001, col. 9, ll. 59-61. On the other hand, the ’381 Patent
`
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`indicates that the “standard COM component” constitutes a mere example, and that
`
`modules can have different structure:
`
`The computer architecture is implemented, for example, as a
`standard COM component, as an ActiveX control; the specifications
`designed by Microsoft, published in the technical literature, and
`incorporated herein by reference. ActiveX control (COM) support is
`currently available within any Microsoft 32-bit Windows operating
`environment. ActiveX controls are supported by all OLE-based
`applications, including all of Microsoft’s end-user products (e.g.,
`Microsoft Office, Word, Access, Powerpoint, Access), the main
`Internet Browsers (Microsoft’s Internet Explorer and Netscape’s
`Navigator--the latter with an add-in product and by 4Q97 directly),
`most other name-brand end-user Windows products (e.g., Lotus
`Notes), and all major development environments (e.g., Microsoft
`Visual Basic and Visual C++, Delphi, Borland C++, Power Builder).
`By implementing the architecture as, for example, an ActiveX control,
`complex technologies can be programmed by virtually any Windows
`or Intranet user or developer. Of course, other component
`specifications may also be used.
`
`Id. at col. 53, ll. 30-48 (emphasis added). In addition to embracing “standard COM
`
`components,” and “other component specifications,” the ’381 Patent embraces
`
`“many other languages (e.g. Java) and distributed architectures (e.g., COBRA).”
`
`Id. at col. 53, ll. 49-53. The ’381 Patent also indicates that typically, in the prior
`
`art, “[e]very engine, such as text retrieval or an OCR (Optical Character
`
`Recognition) engine, has a unique interface. This interface is generally a ‘C’-level
`
`API (Application Program Interface).” Id. at col. 53, ll. 54-57. However, the
`
`’381 Patent does not specify that each module must have a unique or a generic
`
`interface. Claim 10 supports this interpretation, by specifically claiming “at least
`
`one server module application programmer interface (API).”
`
`According to the foregoing discussion, the ’381 Patent is consistent with
`
`both ordinary meanings of a module. Therefore, each “module,” as recited in the
`
`
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`Patent 6,771,381 B1
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`claims, is a logically separable part of the claimed data management system, and a
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`module may include another module and overlap with another module in
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`functionality.
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`Seamlessly
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`Claim 3 recites the phrase “wherein the computer data management system
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`includes the capability to integrate an image using software so that the image gets
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`seamlessly replicated and transmitted to one of other devices and applications.”
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`The ’381 Patent Specification refers to a “simple solution,” delivering “paper
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`processing to existing Intranet and client-server business processes without any
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`fuss,” so that “an office clerk” can “easily copy a report from a desktop scanner to
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`the company’s Intranet-networked copier.” Ex. 1001, col. 46, ll. 42-47. In light of
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`the Specification, the term “seamlessly” means “a low amount of effort,” or
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`“easily.”
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`Go operation
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`Claim 5 recites “wherein the computer data management system includes an
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`interface that enables copying . . . using a single ‘GO’ operation.” The ’381 Patent
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`describes a “GO operation” as similar to a “START” (button) operation on a
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`conventional copy machine. Ex. 1001, col. 46, l. 66 – col. 47, l. 3. Further, “[t]his
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`GO button can copy paper, whether physical or electronic, from one device
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`and[/]or application to another device and/or application,” id. at col. 47, ll. 7-9, and
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`“the user simply has one sequence to execute: select From, select To, and then
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`press GO,” id. at ll. 30-33. In light of the Specification, the term means “an
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`operation that begins a process.”
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`Case IPR2013-00309
`Patent 6,771,381 B1
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`Modules object, program object, document object,
`and system management event object
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`Claim 11 recites “COM-based interfaces” including “at least one modules
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`object maintaining a first list of available input, output, and process modules.” The
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`’381 Patent does not provide a definition for a modules object. The ’381 Patent
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`states that “a preferred embodiment . . . has, for example, the following structure
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`illustrated in FIG. 36[;] however, alternative structures and/or functionality may
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`optionally be used for this object and/or other objects used in the present
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`invention.” Ex. 1001, col. 75, ll. 8-12 (emphasis added). Figure 36 portrays a box
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`with the following text in the box: “Collections of Copier[]Module objects, of
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`types Input[]Module, Output[]Module, and Process[]Module respectively.” No
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`apparent structure is depicted.
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`Accordingly, a “modules object” has “alternative structures and/or
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`functionality” and represents a program or file. The phrase “at least one modules
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`object maintaining a first list” means one or more programs, files, or other
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`structures, each of which can store, or point to, a list or portions of a first list. (The
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`term “maintain” is discussed below.)
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`Claim 11 also recites “at least one program object maintaining a second list,”
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`“at least one document object maintaining information,” and “at least one system
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`management event object used to provide feedback.” Figure 36 also depicts five
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`boxes, without specifying any type of structure, with the boxes labeled as follows:
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`“Object,” “Collection,” “Property,” “Method,” “Event.” These objects, according
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`to the ’381 Patent, as noted supra, also have “alternative structures and/or
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`functionality.” Therefore, all the claimed objects include similar definitions: one
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`or more programs, files, or structures, for performing the designated functions.
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`Case IPR2013-00309
`Patent 6,771,381 B1
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`Means-plus-function limitations, maintain
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`Claims 9 and 13 each recite a “server module” that includes the same four
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`means-plus-function limitations. Claim 9 depends from claim 7, which depends
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`from claim 1, and recites “wherein the server module includes” the four means-
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`plus-function limitations. However, “the server module” recited in claim 9 lacks
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`antecedent basis. For purposes of this proceeding, “the server module” recited in
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`claim 9 is interpreted either to refer back to “at least one module communicable,”
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`which is recited in claim 1, or to refer to an additional module, a server module.
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`In general, the ’381 Patent describes the server module as follows: “a
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`scheduler of activities, providing the information and initiating the modules at the
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`appropriate time in the virtual copy operation. The Server Module manages the
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`other Modules. It does not know about the internal workings of the modules, nor
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`the contents of the information being copied.” Ex. 1001, col. 74, ll. 44-49.
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`The server module recited in dependent claim 9 and independent claim 13,
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`includes, inter alia, the following four means-plus-function limitations:
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`enable virtual copy operation means for initiating, canceling, and
`resetting said computer data management system;
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`maintain list of available module means for maintaining a registry
`containing a list of said input, output, and process modules that can be
`used . . . , said list being read on startup, and maintaining another copy
`of said list in a modules object accessible by said input, output, client,
`process and server modules;
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`maintain currently active modules means for maintaining said input,
`output, and process modules currently being used, . . . and saving the
`currently active modules in a process template file; and
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`maintain complete document information means for maintaining
`information . . . and saving the information in a document template
`file.
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`Case IPR2013-00309
`Patent 6,771,381 B1
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`As claimed, the word “maintain” precedes three of the means clauses. As
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`disclosed, and as discussed supra, a modules object in the server module maintains
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`a list of input, process, and output modules. Ex. 1001, col. 74, ll. 54-55. The word
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`“maintain,” in the context of the claims, and normally, means “[t]o preserve or
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`retain” for a certain time period. See THE AMERICAN HERITAGE DICTIONARY OF
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`THE ENGLISH LANGUAGE 787 (1975). Therefore, claims 9 and 11 generally recite
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`three preserving, keeping, or retaining means clauses.
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`These means-plus-function limitations invoke 35 U.S.C. § 112, ¶ 6.3
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`Petitioner asserts that “virtually no structure is provided corresponding to these
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`means.” Pet. 6. Apparently, Petitioner refers to a lack of algorithmic structure.
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`Regarding “enable virtual copy operation means for initiating, canceling,
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`and resetting said computer data management system,” recited in claim 9, the
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`’381 Patent generally describes that “[t]he Server Module supports simple methods
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`that accomplish the basic copier functionality of go, cancel, and reset.” Ex. 1001,
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`col. 78, ll. 13-15. The ’381 Patent also indicates that the reset function involves
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`returning to default settings. Id. at col. 82, ll. 38-42. The discussion supra of the
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`Go operation similarly shows that the corresponding structure encompasses basic
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`copier structure, including known algorithms associated with the known hardware
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`structure. Accordingly, the corresponding structure for the enable copy operation
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`means clause includes the “basic” buttons, processor, and memory to process and
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`store known begin, stop, and reconfigure algorithms; i.e., corresponding to known
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`structure in prior art copiers or scanners.
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`3 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) re-designates
`35 U.S.C.