Hewlett-Packard Companyv.MPHJ Technology Investments, LLC

Patent Trial and Appeal Board

Nov 19, 2014

09438300 (P.T.A.B. Nov. 19, 2014)

Trials@uspto.gov Paper 35
Tel: 571-272-7822 Entered: November 19, 2014

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

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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-
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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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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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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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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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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
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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.
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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,
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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,
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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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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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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
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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
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.
Ex. 2002 ¶ 29. Mr. Weadock cites to the Institution Decision at page 10, where we
noted that the ’381 Patent states that “‘[a]s long as the input and output [m]odule
conform to the API specified in this document it will plug-and-play with VC.’”
See id ¶ 27 (quoting the Institution Decision, which quotes Ex. 1001, col. 9, ll. 35–
39).
Mr. Weadock’s interpretation ignores the quoted qualifier in the
Specification, which is missing from claim 1: “as long as the . . . Module
conform[s] to the API specified in this document . . . it will plug-and-play.”
Although claim 10 recites a generic “application programmer interface (API).” No
claim requires a module to conform to the “API specified,” the “‘C’-language API”
or “COM-based interface,” as specified in the ’381 Patent Specification. See Ex.
1001, col. 50, ll. 21–34. None of the claims recite the “discrete” or “plug-and-
play” feature.
Patent Owner chose not to limit the claims by qualifying the modules as
“discrete” or “plug-and-play.” The ’381 Patent implies that a module, as set forth
in the claims, is broader than any specific examples of discrete “plug-and-play”
modules. In essence, a software module has boundaries defined by specific code
that produces a specific software function associated in the claim with the module.
This generic software module is “logically separable,” because it can be defined by
the logic code that produces its function, even if the module cannot be physically
extracted from a single memory location as “plug-and-play” module.
Patent Owner also does not address broader implications in the ’381 Patent
Specification, including the module counterparts to prior art aspects, the modules
as interfaces to each other, or the modules as subsystems. See Ex. 1001, col. 7,
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
inconsistent descriptions in the ’381 Patent Specification of the server module, one
of the five disclosed modules). The ’381 Patent does not describe these
“counterparts” or “subsystems” as discrete modules, and an “interface” to another
module implicitly overlaps in code and function with the module for which it
interfaces. Therefore, the modules need not be discrete.
In the related ’302 IPR, during cross-examination by Patent Owner,
Dr. Melen, petitioner (Ricoh’s) witness in that case, testifies that “the word
‘module’ is very broad and very nonspecific, and [can] be comprised of modules
and modules of mod - - modules, modules spread across the network, modules
which include other people’s code.” ’302 IPR, Ex. 2003, 144:16–20.
Dr. Melen similarly testified, when asked about the five modules claimed
and disclosed in a related patent having the same Specification as the ’381 Patent,
that
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).
Dr. Melen’s testimony is not required to support this claim construction, but
we employed the same claim construction in the ’302 IPR. His testimony informs
our construction of the same term in the two proceedings––the ’381 Patent and the
patent challenged in the ’302 IPR share a common specification.
In the ’302 IPR, Mr. Weadock candidly stated during cross-examination that
a module may overlap in code with another module, retreating from statements in
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
overlapping, but there might be situations in which modules could share some
code. There might be some common code between the two modules.” ’302 IPR
Ex. 1013, 191:3–7. Mr. Weadock also acknowledged that separate functionality
between modules may not be required: “I would hesitate to ever make any
absolute statements when it comes to software. . . . Because there’s so many
different designers and so many different philosophies, but it would - - I can say
that it would surprise me to see a modular software application with heavy overlap
of functionality between the modules.” Id. at 192:6–15. The experts, therefore,
agree, that a module may share or overlap in code (which performs the function).
Petitioner points to another passage in the’381 Patent that implies that
module functions overlap: “[W]hile the above discussion has separated the various
functions into separate layers of functionality, the layers may be combined,
physically and/or logically, and various functions may be combined together.” Pet.
Reply 8 (quoting Ex. 1001, col. 85, ll. 9–12).
Petitioner also points out that a book written by Mr. Weadock employs a
definition of a “module” that is consistent with the meaning set forth in the
Institution Decision: “a logical unit of separation in the application.” Pet. Reply 4
(citing Ex. 1020, 1). Implicitly, this definition agrees with ours because code that
performs a specific function in an application can be separated as a logical set of
code that performs a required function.
According to the foregoing discussion, each “module,” as recited in claim 1,
does not require a discrete or plug-and-play feature, but each module is a logically
separable part of the claimed “software application,” demarcated by code
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
such module.
Claims 8 and 12, certain phrases
Claim 8 recites “wherein the one or more of the external devices and
applications integrates the computer data management system into an external
application via one of running the computer data management system, as an
external service and embedding the computer data management system as an
embedded service.” Based on the claim language, “one of” refers to running and
embedding, and means one of running or embedding. The claim does not define a
relative internal system for the “external” application. Claim 8 depends from claim
1 and requires that the computer data management system includes a memory and
a processor. It is not clear how that hardware portion of the claimed management
system can be integrated by means of embedding or running. Accordingly,
integrating by one of embedding and running, means that the computer data
management system connects to, exists as, runs as, or was built as, part of another
(i.e., external) application.
Patent Owner’s declarant, Mr. Weadock, states that “the Board has a valid
point” about the hardware not being embedded into anything, such as software, but
“that a person of ordinary skill would understand that the ‘wherein’ clause of
Claim 8 pertains to the software components of the computer data management
system” as being embedded. See Ex. 2002 ¶ 36. Nevertheless, a reasonable
interpretation, which does not require ignoring specific claim limitations that
require the processor and memory hardware in the claimed management system to
be “integrate[d] . . . into an external application,” via “embedding . . . as an
embedded service,” implies that an external application includes hardware. The
’381 Patent Specification supports this interpretation, for the reasons explained
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above. Another supported and reasonable interpretation is that “integrates”
includes “running . . . as an external service,” as claim 8 specifies, which implies
that “integrates” means that two devices, systems, or applications, are compatible
with each other.
Claim 12 recites “[a] computer data management system” that includes a
“single function copy operation linking devices,” “a one step programming
method[,] . . . a method of recreating a module oriented copier in software,” and “a
copier interface.” Claim 12 recites phrases that appear to place the claim into two
statutory categories, “process” and “machine,” which is impermissible under
35 U.S.C. § 101. For purposes of this proceeding, the “one step programming
method” is interpreted either to describe functional characteristics of a machine,
the data management system, or to include a method of making the “electronic
business processes” in the machine, so that the machine includes “a module
oriented copier in software,” made “with no or minimal reprogramming.” See
Claim 12. This product-by-process step is not afforded patentable weight, because
Patent Owner does not direct attention to a disclosure in the Specification that
indicates that after the system has been made, it behaves differently than a system
made with more than minimal reprogramming.
Claims 9–11
Claims 9–11 recite a “server module.” Claim 9 depends from claim 7,
which depends from claim 1, and recites “wherein the server module includes” the
four means-plus-function limitations. However, “the server module” recited in
claim 9 lacks antecedent basis, because claim 1 does not recite a server module. In
our Institution Decision, we determined that “the server module” recited in claim 9
is interpreted either to refer back to “at least one module communicable,” element
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1.4, as recited in claim 1, or to refer to an additional module, a server module.
Dec. on Inst. 17.
Patent Owner does not disagree with this interpretation. Rather, as noted
above in the construction of “at least one of,” during the oral hearing, Petitioner
asserted and Patent Owner agreed, that claim 1 recites “at least one of” “at least
one input module” or “at least one module communicable,” in the alternative.
Therefore, if claim 9 refers back to clause 1.4, “at least one module
communicable,” which claim 1 does not require necessarily because it is an
alternative to clause 1.3, it follows that claim 9 does not limit claim 1 under this
interpretation. Similarly, “the server module” recited in claims 10 and 11 also
lacks antecedent basis, because they each refer back to claim 7, which refers back
to claim 1. Accordingly, claims 9–11 recite limitations that do not limit the claims
under the alternative interpretation that we employ, wherein “the server module”
implicitly refers back to clause 1.4, “at least one module communicable,” as recited
in claim.
The Demand Letter
To support its claim construction, Petitioner submitted a demand letter
(Ex. 1016, 26) by Patent Owner to accused infringers of Patent Owner’s patents.
See Pet. Reply 4 (arguing “it would be improper to ignore [Patent Owner’s] prior
statements for purposes of BRI [broadest reasonable interpretation].”) The demand
letter is not necessary to the claim construction or holding, but it serves to
corroborate the claim construction of module and application outlined above. The
demand letter implies that Patent Owner’s claim construction of these terms
corresponds to the constructions outlined above.
3

3
Patent Owner was questioned about the demand letter during the ’302 IPR
hearing and the ’309 IPR hearing. See Tr. 18–22, IPR ’302, Tr. 43.
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For example, Patent Owner’s demand letter states that
[a] good example of an infringing system, and one your
company likely uses, is an office local area network (“LAN”) which is
in communication with a server, employee computers having email
software such as Outlook or Lotus, and a third-party scanner (or a
multi-function printer with scanning functionality) which permits the
scanning of a document directly to [an] employee email address as a
pdf attachment. Such a system would be a typical example of what
infringes. There are other examples listed further below.
. . . [Y]ou may find it useful to consider, as illustrative examples,
claims 1–5 of the ’426 Patent. Reviewing those you can see that the
patent claims are directed to a system having a digital
copier/scanner/multifunction device with an interface to office
equipment (or to the web) and related software, for scanning or
copying and transmitting images electronically to one or more
destinations such as email, applications or other local files. Coverage
of this type of system, and of the more generally worded example
[above] . . . , is further reflected in claims 1, 8 and 15 of the ’410
Patent, claims 12 and 15 of the ’381 Patent, and claims 9 and 16 of the
’590 Patent.
Ex. 1016, 27.
Claim 5 of the ’426 Patent, the subject of the related ’302 IPR, includes “a
software application” that “comprises . . . at least one input module . . . at least one
output module . . . at least one process module . . . at least one client module . . . at
least one client module . . . and at least one server module.” See ’302 IPR, Ex.
1001, col. 86, ll. 21–28. The demand letter implies that claim 5, which recites
modules, similar to claim 1 of the ’381 Patent, does not require discrete modules or
a single application, because the claimed system is “directed to a system having a
copier/scanner/multifunction device with an interface to office equipment (or to the
web) and related software, for scanning or copying and transmitting images
electronically to one or more destinations such as email, applications or other local
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files.” Ex. 1016, 27 (emphasis added); see also Pet. Reply 4–5 (describing as
“inconsisten[t]” Patent Owner’s claim constructions in this proceeding and with
respect to the demand letter).
Claim 12 of the ’381 Patent recites “a computer data management
system . . . wherein the system comprises . . . a method of recreating a module
oriented copier in software.” Claim 12 also recites “a copier interface
implemented as [a] software application.” The demand letter indicates that typical
office systems that scan and transmit images “to one or more destinations” infringe
claim 12. Therefore, in line with the claim construction, the demand letter and
claim 12 imply that a software module need not be discrete and a “software
application” need not be a single application.
B. Mr. Wibbels
Patent Owner asserts that Mr. Wibbels is not a person of ordinary skill in the
art so that his opinions included in his declaration “should be given little to no
weight.” PO Resp. 12. Patent Owner contends that Mr. Wibbels’s “experience
with printers . . . is limited to firmware rather than high level software
applications.” Id. at 11. Patent Owner acknowledges that Mr. Wibbels has a B.S.
in physics, a B.A. in mathematics, and an M.S. in mechanical engineering and “has
had some formal instruction in the C language and is self-taught in the QuickBasis
language.” Id. at 10. According to Patent Owner, Mr. Wibbels also “worked on a
number of printer hardware level algorithms, such as half-toning algorithms,
calibration algorithms, and under-exposure algorithms.” Id. at 10–11.
Patent Owner’s assertions bolster the record evidence and show that
Mr. Wibbels has experience and education in software. Patent Owner does not
qualify “high level” software. Patent Owner had the opportunity to challenge the
declaration of Mr. Wibbels through cross-examination and competing testimony.
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See In re TMI Litig., 193 F.3d 613, 692 (3d Cir. 1999) (“So long as the expert’s
testimony rests upon ‘good grounds,’ it should be tested by the adversary
process—competing expert testimony and active cross-examination.” (quoting
Ruiz-Troche v. Pepsi Cola of P. R. Bottling Co., 161 F.3d 77, 85 (1st Cir.1998))).
In addition to having a Master’s degree in engineering, Mr. Wibbels has been a
“Distinguished Technologist/Strategist” at Hewlett Packard Company since 2004.
Mr. Wibbels is “an inventor of 17 issued U.S. Patents” and has “spent
approximately 20 years working on product development of HP scanning and
printing solutions.” Ex. 1012, 1–2; Ex. 1005, 2.
The record shows that Mr. Wibbels possesses “at least . . . ‘ordinary skill in
the art’” (Ex. 1005 ¶ 20):
the level of ordinary skill in the art of the ’381 [Patent] at the time of
the effective filing date is a person with a bachelor of science degree
and two years experience in research or development (e.g.,
engineering, product development, requirements analysis) in fields or
industries pertinent to the art (e.g., digital imaging systems, such as
scanners or printers). With more education, for example post-
graduate degrees and/or study, less industry experience is needed to
attain an ordinary level of skill.
Id. ¶ 19.
The claims of the ’381 Patent generally recite systems for processing and
transmitting electronic images with “counterparts” in conventional printing
systems. The ’381 Patent Specification also summarizes the disclosed invention as
involving C-level software. See Ex. 1001, col. 3, ll. 35–67. Firmware skill,
contrary to Patent Owner’s arguments, skill in creating computer algorithms, and
other languages, including C-level, represent relevant skill. Mr. Weadock testifies
that the requisite level of skill incudes experience in “printing, networking,
scanning, and e-mail.” Ex. 2002 ¶ 15. Patent Owner acknowledges that
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Mr. Wibbels had “formal education” in software languages including C-level. PO
Resp. 10. The record, including the prior art, which is directed to similar systems
as the claimed invention, show that Mr. Wibbels has the requisite engineering
education, and experience at least in imaging art, encompassing printer, scanning,
and networking––“digital imaging systems.” Ex. 1005 ¶ 19. Mr. Wibbels
invented systems as specified in several relevant patents generally involving
computer based imaging. See Ex. 1012, 1–2. Patent Owner has not demonstrated
through cross-examination or otherwise that Mr. Wibbels’s testimony is unreliable.
Mr. Wibbels qualifies to aid in the Board’s understanding and his opinion is
entitled to due weight.
C. Asserted Grounds of Unpatentability
1. Cotte – Anticipation, Claims 1–15
Cotte–Overview
Cotte generally describes an integrated system that produces scanned
document data that can be sent to a host computer and e-mailed, faxed, or printed.
Ex. 1011, Abstract, Fig. 10, col. 10, ll. 42–58. Cotte’s paper input device
senses the insertion of a document to be scanned, initiates a host
computer process, i.e., controls the host process by insertion of the
paper and symbols on the paper, scans the images and text on the
paper, . . . send[s] the scanned data to the host for further electronic
processing such as display, transmission, storage or modification.
Principally, this new technology is a paper input device using
scanning technology which controls the host computer rather than the
other way around.
Id. at col. 2, ll. 42–51.
Cotte also discloses that
the user can put the document in the paper input device and the input
device software will automatically scan the document, send the data to
the host in any of the ways described herein, and the input device
software resident on the host will then cause a pop-up window to
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appear on the screen where the image of the scanned document
appears.
Id. at col. 16, ll. 58–63.
One way to send data involves symbol recognition software: “the input
device includes symbol recognition software that can recognize symbols on the
document to be scanned which indicate where the document is to be FAX’ed, sent
as E-mail[,] etc.” Id. at col. 11, ll. 27–31.
Claim 1
Relying on Mr. Wibbels’s declaration (Ex. 1005), Petitioner reads the
elements of claim 1 onto Cotte’s scanning network system. Pet. 43–50. According
to the ’381 Patent, “VC can be viewed as a copier”––a copier in the sense of
copying electronically––even though “VC does not distinguish between electronic
and physical paper.” Ex. 1001, col. 71, ll. 62–65. Based on the foregoing
descriptions, the two systems are similar, in terms of the functionality as a basic
copier operating on electronic and physical paper.
The preamble of claim 1 follows:
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 . . . one or more of external
devices and applications . . . connectable at least one of locally and via
the Internet.
Cotte discloses the preamble, according to the discussion supra and
Petitioner’s showing. For example, as described supra, Cotte’s input device
system manages the host computer and sends an image and text to an e-mail, fax,
printer, or other similar applications or devices that have software, thus showing
that Cotte’s system is “connectable at least one of locally and via the Internet,” as
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the claim 1 preamble recites. See Pet. 43; Ex. 1011, Fig. 17, col. 10, ll. 35–58, col.
16, ll. 20–22 (disclosing local or wide area network); Ex. 1005 ¶ 291.
Claim 1 also recites the following limitations: “at least one processor
responsively connectable to said at least one memory, and implementing the
plurality of interface protocols as a software application” and “at least one memory
storing a plurality of interface protocols for interfacing and communicating.”
Cotte discloses microprocessor 352 implementing software for controlling
operations of the input device that is stored in ROM/RAM 132. See Ex. 1011,
Fig. 11A. As Petitioner and Mr. Wibbels explain, Cotte’s processor 352, which
implements this stored software for fax and input communications, satisfies the
listed limitations. See Pet. 43; Ex. 1005 ¶ 293; Ex. 1011, col. 8, ll. 37–55, col. 9,
ll. 4–12. For example, “the input device software controlling the[ ]microprocessor
352 includes software routines to send the appropriate commands to the Fax
modem to control its operations in sending the scanned data as a Fax.” Ex. 1011,
col. 9, ll. 4–12. ROM/RAM memory 132 stores the input device software. Id. at
col. 8, ll. 37–39.
Claim 1 also recites
at least one input module managing data comprising at least one
of paper and electronic paper input . . . , 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.
Claim 1 allows for each of the “managing” functions to be handled by one or
more of the “at least one input module.” To satisfy the input module limitations,
Petitioner relies on Cotte’s scanner, input device 114 at Figure 11A, which
includes the stored fax protocol discussed supra. Pet. 43; Ex. 1005 ¶ 298. As
noted, in Cotte, the “input device software controlling the[ ]microprocessor 352
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includes software routines to send the appropriate commands to the Fax modem to
control its operations in sending the scanned data as a Fax.” Ex. 1011, col. 9, ll. 8–
12. Cotte’s input software also sends data automatically to a laser printer, thereby
managing at least one imaging device to input data through a digital copier. Id. at
col. 10, ll. 45–50, col. 11, ll. 33–37. Therefore, Cotte’s input device software
routines manage paper and electronic paper, through the scanner, an imaging
device, thereby satisfying at least the first two recited functions of the input
module.
Cotte also implies that input software routines automatically control data
between the host and the fax modem, in both directions. See Ex. 1011, col. 8,
ll. 39–56. Controlling this fax data transfer also satisfies the first, second, and third
input module functions, the third being “managing the electronic paper from at
least one third-party software application[].” As an example, microprocessor 352
programs UARTs 135 and 136 to receive fax data and send it to host CPU 110.
Ex. 1011, col. 8, ll. 52–56, Fig. 11A. As another third-party software application,
Cotte also discloses that the “input device includes symbol recognition software
that can recognize symbols on the document to be scanned which indicate whether
the document is to be FAX’ed, sent as E-mail[,] etc.” Ex. 1011, col. 11, ll. 27–31.
The claimed input module functions read on that process, because the symbol
recognition software helps to manage electronic paper from a scanner using
symbol software, which constitutes a third-party application. Software resident on
the host may also generate a drop-down menu, which also constitutes a third-party
application relative to the input device software. Id. at col. 10, ll. 53–57, col. 15,
ll. 35–44. Also, sending data to a word processor after performing optical
character recognition constitutes managing electronic paper from at least one third-
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party software application (the OCR third-party application). Id. at col. 10, ll. 53–
57.
Patent Owner asserts that “Cotte’s ‘software routines,’ that are implemented
by a microprocessor 252 of an input device 114, do not anticipate a software
application that comprises an input module, as required by claim 1.” PO Resp. 13.
Patent Owner asserts Cotte’s microprocessor “appears to be nothing more than a
hardware device (e.g., microprocessor 52) controlled by firmware.” Id.
Patent Owner’s arguments are not persuasive. According to the claim
construction outlined above, a “software application,” as set forth in claim 1, can
include software stored in different places, including as firmware, which in this
case includes RAM/ROM memory 132 in Cotte. See Ex. 1011, Fig. 11A, Fig. 17.
The ’381 Patent Specification also specifically mentions that the disclosed program
can “instruct the central processing unit,” Ex. 1001, col. 62, l. 39, and be stored in
“ROM 60 and/or RAM 62” or another “memory media . . . [as] program
information for controlling the computer to enable the computer to perform the
functions described herein,” id. at ll. 30–37.
Patent Owner also asserts that Cotte’s “symbol recognition software cannot
be an input module because the document has already been received”––“symbols
cannot be recognized by software until after the document is scanned.” PO Resp.
14. This argument does not address the alternative of the input module controlling
the programmed UARTs and performing other scanner input functions, for
example, inputs to OCR, OCR outputs to other software, or input software
deciding to send the scan as input to the fax, as input to the host for further
processing, as input to a RAM buffer, or as input to a printer (i.e., “managing data
through at least one of a . . . printer”). See Pet. 43; Ex. 1011, col. 9, ll. 1–12.
Further, “special software in the input device compresses the scanned data, sends
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the scanned data to the host and automatically carries out the desired processing”
by receiving a menu command or symbol recognition command. Ex. 1011, col. 2,
ll. 55–62. Therefore, even if claim 1 requires controlling the scanning, Cotte
discloses compressing during scanning. Further, according to the ’381 Patent
Specification, as noted above, input modules have counterparts to prior art
scanners. Cotte’s input device software includes software to control the scan as a
typical prior art input scanning device.
Patent Owner also argues that Cotte’s system does not manage paper from a
third-party software application. PO Resp. 14. Patent Owner describes as
“problematic” the Board’s finding in which Cotte’s symbol software recognition
software is an input module that both manages one imaging device and manages
electronic paper from at least one third-party software application. Id. at 15.
According to Patent Owner, “it would be illogical for a software application to
receive electronic paper from itself.” Id. at 15.
This argument is not clear, because the recited software application
communicates with the recited third-party application. Cotte includes several
third-party applications in addition to the software recognition software, such as
OCR, e-mail, or fax. The argument also conflates the symbols, or third-party
software which creates the symbols, with the recognition software in the input
device or the host, the input module. The symbols, placed on the paper by a third-
party software application, or the symbols as a third-party software application, are
processed by the recognition software, or input module, which recognizes those
symbols. For example, Cotte states that “the recognition software [input module]
is taught to recognize the bit map of sticker 400 [the third-party software
application] as a command to invoke the appropriate host software to receive the
scanned image of document 402 and send it to the FAX modem 118 in Fig. 10.”
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Ex. 1011, col. 12, ll. 11–14. “[T]he symbols may be printed on the document
using [third-party application] software . . . .” Id. at col. 11, ll. 34–35.
As Patent Owner recognizes, Cotte states that the recognition software can
be in the form of “specific ‘macros’ or predefined sequences of instructions.” Id.
at col. 11, 48–49; see PO Resp. 20. Although Patent Owner’s declarant,
Mr. Weadock, concludes that a “macro” is not a “module,” Mr. Weadock fails to
set forth a meaningful distinction, and refers to a “macro” as a “predefined script of
commands to be executed as a unit.” Ex. 2002 ¶ 77. These macros fit Patent
Owner’s definition of a “discrete” set of instructions of a module, and the broader
construction outlined above wherein the functions define the software module.
Patent Owner’s similar argument that “Petitioner seems to confuse a
software function with a software module” relies on an assertion that a module
requires “‘a consistent API [application programmable interface].’” PO Resp. 19
(quoting Ex. 2002 ¶ 77). The recited modules, however, do not require an API.
Patent Owner also alleges that Cotte’s system does not implement a plurality
of software protocols as a software application to interface and communicate with
a plurality of external destinations. Id. at 16. Patent Owner also asserts that a fax
protocol and printer driver do not constitute a plurality of protocols. Id. Patent
Owner acknowledges that Cotte’s system “communicates with other devices,” but
argues that the evidence does not show that “‘a plurality of protocols’ is in fact
implemented as a software application.” Id. at 17.
These arguments are not persuasive. Mr. Wibbels testifies that Cotte
discloses transmitting data using protocols, including printer drivers and fax
protocol software. See Ex. 1005 ¶ 293. Mr. Weadock does not rebut this
testimony persuasively. In response to the assertion that a printer driver constitutes
an additional protocol to a fax protocol, Patent Owner responds that a scanner
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would not have its own “printer driver that is implemented as a software
application.” PO Resp. 16. Based on the claim construction, claim 1 does not
preclude the location of the printer driver software from being stored in distributed
manner acting with the recited software application.
Patent Owner acknowledges that a printer driver “is a discrete software
program.” Id. The record shows that several protocols exist necessarily to
communicate with different devices and their software, including a scanner, an e-
mail service, a printer, a Clipboard, or a fax. See, e.g., Ex. 1011, Fig. 17, col. 14,
ll. 28–30; Pet. Reply 5. For example, Cotte supports this finding, by disclosing the
mapping of an e-mail address and “communication protocol” for the e-mail. See
Ex. 1011, col. 13, ll. 4–6. Cotte also discloses “any form of transmission of data to
the host including transmission over a local or wide area network, satellite, packet
radio, ISDN transmission, etc.” Id. at col. 16, ll. 20–23. Cotte discloses “prior art
image compression algorithms” and “[a]ny known data compression process.” Id.
at col. 14, ll. 56–60. Cotte discloses “parallel format transmission protocol,” id. at
col. 14, l. 67–col. 15, l. 1, or a “serial protocol,” such as RS232, or a fiber optic
link, id. at col. 17, l. 40–50. These different types of transmission and compression
formats constitute different protocols. Petitioner points out that Patent Owner
asserted in previous litigation, asserting infringement of a similar limitation in a
related patent, that using “‘protocols is a requirement . . . to communicate and
interface with external devices and applications.’” Pet. Reply 5 (quoting Ex. 1022
¶ 151, emphasis by Petitioner).
Claim 1 also recites “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.” As noted in the Claim
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Construction section, the parties agree that this clause (1.4) is alternative to the
preceding clause, the “at least one input module” (1.3). It follows that Cotte need
not disclose both clauses to anticipate claim 1.
Nevertheless, in the alternative, Petitioner maintains that Cotte discloses the
following: “A module in communication with an input module. Upon receiving a
scanned image, other modules attach a scanned image to a clipboard, an email, or
send it as a fax.” Pet. 43 (citing Ex. 1011, col. 10, ll. 43–53, FIG. 17; Ex. 1005
¶ 295).
At the cited passage, Cotte discloses host software, which includes
a drop down menu 250 presenting options to the user regarding what
should be done with the scanned image. These menu options can be
such things as “FAX this image” as symbolized by icon 253 or “Send
this image as an E-mail message” as symbolized by icon 255, or
“Send this image to the laser printer for printing” as symbolized by
icon 257 . . . .
Ex. 1011, col. 10, ll. 43–50; see also id. at Fig. 17, col. 4, ll. 46–49 (describing a
typical pop-up window based on software which exists on the host machine).
In other embodiments, Cotte describes performing similar processes using
codes in an input stream, or using the symbols described above, using automatic
processing, “without the user having to press any buttons, make any menu
selections.” Id. at col. 11, ll. 42–43. Cotte implies that both sets of software can
be used together, because the input device “includes” recognition software, and the
separate host computer includes the typical pop-up menu. Id. at col. 11, l. 28, col.
10, ll. 44–48. The description of “without the user having to press any buttons,
make any menu selections,” implies the user may make selections if the user runs
out of stickers having symbols through the existing host pop-up menu. See col. 11,
l. 44 – col. 12, l. 4, Fig. 17. In the preferred embodiment, the input device
“includes symbol recognition software.” Id. at col. 11, l. 27. Therefore, Cotte
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generally implies that the existing host computer retains its pop-up menu in some
embodiments that include symbol recognition software as part of the input device.
Patent Owner also argues that Cotte does not disclose the element of
“capable of dynamically combining the external applications with at least one of
digital capturing devices and digital imaging devices.” PO Resp. 20–21 (emphasis
omitted). One or more of Cotte’s symbols, software for creating same, the e-mail
software, fax software, or word processing comprise external applications, which
are capable of being combined with “at least one of digital capturing devices and
digital imaging devices.” These host packages are external to the input device, for
example. See Ex. 1001, col. 10, ll. 29–58 (disclosing sending an image as an e-
mail or fax, or performing word processing on it).
Cotte’s drop down menu or symbol recognition software each constitutes “at
least one module communicable with said at least one input . . . modules,” with
input modules including the UART input module software, or the input module
software that controls scanning functions, etc., as identified supra. See Pet. 43
(referring to other modules that attach a scanned image to an e-mail, clipboard, or
fax). The menu software or recognition software is “capable of dynamically
combining” the external fax application with at least digital capturing devices or
digital imaging devices, such as, for example, the scanner or printer. In addition,
similar to e-mail or fax, OCR or word processing each constitutes an external
application relative to the input device, and those applications can be combined
dynamically with “at least one of digital capturing devices and digital imaging
devices” by processing data from those devices.
The host software communicates with the input device software, and
includes the “appropriate software package,” including the “host FAX software,”
or “E-mail software.” Ex. 1011, col. 10, l. 67, col. 12, l. 32, col. 13, ll. 35–37, 50–
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54, col. 15, ll. 55–64, col. 17, ll. 51–61, col. 20, ll. 60–63. The host packages
include word processing and OCR described supra. The input device includes a
“recognition software portion.” Id. at col. 13, l. 13. The fax, e-mail, word
processing, printing, OCR software, file storage, and other packages reasonably
constitute or include “at least one input, output, client, and process modules and
external applications,” with “at least one module communicable” also reading on
part of the input device recognition software or the host menu software, each of
which may generate commands to invoke the appropriate host software. Ex. 1011,
col. 13, ll. 36–49, 14, ll. 30–34; Ex. 1005 ¶ 295. For example, the display portion
of the host menu itself reasonably constitutes a client module, and OCR, word
processing, or compression software, reasonably constitutes a process module.
Cotte’s input device software “invoke[s] specific types of software
commonly found on user’s computers or to invoke specific ‘macros’ or predefined
sequences of instructions.” Ex. 1011, col. 11, ll. 47–49. Therefore, similar to the
explanation above, either the menu software, the part of the input device software
that invokes one of the macros, the input software on the host that responds to the
input device invoking commands, or one or more of the macros represent, “at least
one module communicable with said at least one input” module. See Dec. on Inst.
25. Patent Owner responds by stating that the macros replace the recognition
software, but it is not clear how that shows a missing limitation. See PO Resp. 20.
Both constitute a form of symbol recognition software that may employ stickers
(part of the third-party software discussed above). See Ex. 1011, col. 11, ll. 44–66.
Patent Owner also argues that “[t]he Petition does not specify how Cotte discloses
a macro or symbol recognition software that communicates with an input module,
an output module, a client module, a process module, and external applications.”
PO Resp. 20. This argument is not clear, but it appears to ignore the limitation “at
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least one” in claim 1, i.e., “communicable with at said least one” input module and
external application. As discussed in the Claim Construction section, the parties
agree that “at least one” only specifies alternatives. In any event, as explained in
the preceding paragraph and above, Cotte discloses module software such as e-
mail, fax, UART control, printer drivers, OCR, word processing, and compression
algorithms, thereby disclosing one or more of the claimed modules.
Patent Owner argues that Petitioner’s showing improperly combines
disparate software elements as a “single software application” and covers
“firmware.” See PO Resp. 19, 18–19. This argument is not persuasive because it
assumes an overly narrow construction of “software application.”
Patent Owner contends that Cotte requires that a command be manually
entered, so there is no disclosure of “dynamically combining.” See PO Resp. 21.
This argument is not persuasive. Cotte’s system automatically combines actions
through the symbol recognition software or menu options. Claim 1 does not
specify when any dynamic action starts, and Patent Owner does not clearly
demarcate a distinction based on the claim or even the disclosure (assuming
arguendo a limiting disclosure). See id. at 20–21. Pressing the button in Cotte
causes a dynamic action because after it is pressed, the system responds with an e-
mail, fax, etc. In the ’381 Patent, a user similarly employs a “GO” command,
according to claim 5, for example.
Based on the foregoing discussion and record, Petitioner shows by a
preponderance of evidence that Cotte anticipates claim 1.
Claim 2
Patent Owner argues that “Cotte fails to disclose one or more of the external
devices and applications include a printer, a facsimile, and a scanner.” PO Resp.
22. Patent Owner’s argument does not explain clearly why the printer, facsimile,
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and scanner of Cotte, identified above, and in the Institution Decision, do not
anticipate claim 2.
Claim 1 requires the system to be capable of sending one or more of
electronic images, documents, or graphics to “external destinations.” These
“external destinations” include “the one or more of the external devices and
applications” referenced in claim 2. However, Patent Owner does not maintain
that Cotte’s system must send images, documents, or graphics to a scanner at one
of such destinations to anticipate claim 1. Patent Owner does not contend
specifically that the ’381 Specification provides support for sending electronic
images, documents, or graphics, from the system to a scanner. Rather, during oral
argument, Patent Owner raised an untimely new argument, contending that a
scanner and printer are part of the same “multifunctional peripheral” device, and
that claim 2 requires sending an electronic document to such a multifunctional
device. That argument, presented for the first time at the oral hearing, is waived.
Compare Tr. 39:10–20, with PO Resp. 22.
Even if the argument is not waived, claim 2 does not explicitly require a
scanner and printer to be at a single “external destination[].” Claim 2 refers to an
“external destination,” in claim 1, but not a single “external destination.” Claim 1
recites “transmitting . . . to a plurality of external destinations including one or
more of external devices and applications.” Each one of the plurality may include
one or more external devices. Claim 2 requires “one or more of the external
devices” to include “a printer, a facsimile, and a printer.” Hence, one external
device may be a printer, another may be a facsimile, and another may be a scanner.
Claim 1 requires transmitting to a plurality (e.g., two) of the devices, for example,
a printer and a facsimile. Claim 2 does not require the capability to transmit to all
the external devices, including the one that is a scanner. Therefore, claim 2 reads
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on Cotte’s system, because Cotte’s system has the capability to transmit to at least
two of three external devices, a printer, a facsimile, and a scanner, as claim 1
requires, and one or more of the external devices include a printer, a facsimile, and
a scanner, as claim 2 requires.
Based on the foregoing discussion and record, Petitioner shows by a
preponderance of evidence that Cotte anticipates claim 2.
Claim 5
Claim 5 recites an interface that enables copying images between physical
devices, applications, and the Internet using a single “GO” operation. Petitioner
generally relies on Cotte’s drop down menu, which provides a list of options, as
explained above in connection with claim 1. See Pet. 44. Patent Owner argues
that Cotte does not disclose transfers over an Internet, because Cotte discloses
RS232 communications. PO Resp. 23. Patent Owner also argues that Cotte’s
“menu is directed to images that have already been scanned,” so it does not
disclose “a single ‘GO’ operation.” Id.
Patent Owner’s assertion of a lack of Internet capability is not persuasive.
Cotte discloses “any form of transmission . . . over a local or wide area network,
satellite, packet radio, ISDN transmission, etc.” See Ex. 1011, col. 16, ll. 20–23.
Mr. Wibbels supports Petitioner, declaring that “sending an email message would
include use of either a local area network or the Internet.” Ex. 1005 ¶ 291.
Mr. Weadock does not rebut this, but instead, states that in the 1992 timeframe, the
Internet was not well-known. Ex. 2002 ¶ 72. Petitioner points out that 1992 is not
the relevant timeframe. See Pet. Reply 6. Petitioner’s point is persuasive, based
on the earliest possible effective filing date for the ’381 Patent of November 13,
1998. Therefore, skilled artisans would have recognized that Cotte discloses the
transfer of images over the Internet at the time of the invention.
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Patent Owner’s argument that a single “GO” operation does not apply to an
image that has “already been scanned” also is not persuasive. Patent Owner
explains that “copying” cannot occur because scanning occurred first. See PO
Resp. 23. Contrary to the argument, claim 5 requires “copying images between
physical devices, applications, and the Internet.” It is not clear what “copying . . .
between . . . the Internet” means. In any event, claim 5 does not preclude “copying
images between” a scanned image at a scanner and another device. In other words,
“copying . . . between” as set forth in claim 5, reasonably means repeating or
transmitting electronic image data. Cotte discloses automatically copying a
scanned image or document to any software package, or internal or external
storage devices, using a pop-up menu. See Ex. 1011, col. 18, ll. 54–56, Fig. 17.
Alternatively, as explained in the Institution Decision, “Figure 22 similarly
discloses a copy button 310. Pressing the button causes the system to scan the
image and send it to a printer for copying.” Dec. on Inst. 26 (citing Ex. 1011, col.
19, ll. 42–48). Therefore, Cotte also discloses copying images and sending them to
a laser printer by “pressing copy button 310” (i.e., a single “GO” operation) before
the scanner scans the images. See Ex. 1011, col. 19, ll. 42, 36–55. Patent Owner
does not challenge this finding. Based on the foregoing discussion and record,
Petitioner shows by a preponderance of evidence that Cotte anticipates claim 5.
Claim 7
Claim 7 depends from claim 1 and recites “wherein the software application
comprises at least one output module managing the data output from the computer
data management system,” as set forth in claim 1. The Institution Decision notes
Petitioner’s citation to Cotte’s blocks 328, 326 in Figure 23 as representing the
claimed output module, as follows: “Cotte’s software that manages data,” and
block 344, which checks scripts, in Figure 24. Dec. on Inst. 27–28 (citing Ex.
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1011, col. 8, ll. 38–52, col. 10, ll. 49–50, col. 18, ll. 52–55). Block 328 (“SEND
IMAGE DATA TO LASER PRINTER”) is part of “a flow chart of processing by
input device software resident in both the paper input device and the host to
implement a photocopy option.” Id. at col. 5, ll. 3–6. Block 344 also represents
part of a “flow chart of the processing” that employs “HOST RESIDENT
SOFTWARE.” See id. at col. 5, l. 8, Fig. 24.
Patent Owner argues that “it is possible for the printer [of Cotte] to be
hardwired or to have firmware,” so that it does not constitute “at least one output
[software] module,” as set forth in claim 1. PO Resp. 24. Patent Owner’s
argument about possible printer hardware in Cotte fails to address the cited
software teachings. Further, Patent Owner acknowledges that a printer driver “is a
discrete software program.” Id. at 16.
Patent Owner also asserts that Cotte does not disclose a “modular software
application,” id. at 24, and makes a similar argument about Cotte’s alleged failure
to disclose “a discrete ‘process module,’” id. at 25. Patent Owner also argues that
Cotte does not disclose a “single software application,” and cites “Microsoft
Word,” as an example thereof. Id. at 19. Patent Owner makes a similar argument
that the claimed process module requires a discrete module that Cotte does not
disclose. See PO Resp. 25 (“assuming, for the sake of argument” that converting
grayscale pixels satisfies the process module function).
These arguments rely on overly narrow claim constructions that the record
does not support. Claim 7 does not recite or require the modules to be “discrete.”
The record shows that Cotte’s system performs the claimed output or process
functions using software. It follows that the software code in Cotte that produces
the function, under a broadest reasonable claim construction, constitutes a software
application that comprises a module for that function.
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Claim 7 also recites “at least one client module” presenting the paper or
electronic paper data and “information related to at least one of the input and
output functions.” Claim 7 requires the client module to present the electronic
paper data, and information related to at least one of the input and output functions.
Petitioner cites Cotte’s pop-up displays, which include a display of the incoming
electronic paper data, as reading on these client modules. Pet. 45 (citing Ex. 1011,
col. 18, ll. 50–55, col. 16, ll. 60–66).
Petitioner also cites Figure 17 of Cotte (entitled “Incoming Pages”). See Pet.
Reply 12. Figure 17 displays a pop-up menu showing different options for
incoming pages. See Ex. 1011, col. 16, ll. 60–66, col. 18, ll. 50–55. Displaying
the pages constitutes presenting paper and electronic paper data, because the data
reveals relative gray scale data values or document types, etc., while portraying
written output options for archiving, photocopying, mailing, and faxing, constitutes
providing the requisite input and output function information. See Ex. 1011,
col. 17, ll. 5–10, Fig. 17.
Patent Owner also argues that Cotte does not disclose a client module
presenting data “as it is being copied,” as recited in claim 7. According to Patent
Owner, Cotte’s pop-up window does not anticipate claim 7, because Cotte’s host
may display the document after it is copied. See PO Resp. 25–26. The argument
fails to address Figure 17 of Cotte, which includes pop-up windows with the title
“Incoming Pages,” shows pages under the title, and shows function buttons listed
as “Photocopy,” “Fax,” and “Mail,” among others. Cotte states that “incoming
data is also displayed in a pop-up window.” Ex. 1011, col. 18, ll. 52–53.
During oral argument, Patent Owner argued that claim 7 requires the top of a
document to be displayed while the bottom of the document is being copied, and
also indicated that if fifty pages are being scanned, then some of the first pages
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would appear during the scanning of the other pages. Tr. 42:22–43:2, 44:10–16.
Patent Owner does not point the Board to support for this interpretation. In any
event, the argument recognizes that an inherent delay exists between presenting
and copying data in the claimed system. In Cotte’s system, a user can change the
gray scale after viewing that document on the computer screen, in order to obtain
another view of another copy of the document in the new selected gray scale. This
also implies, in line with the “Incoming Pages” title, that a document image is
displayed at least while it is being copied, or copied a subsequent time. See
Ex. 1011, col. 16, ll. 57–66.
Based on the foregoing discussion and record, Petitioner shows by a
preponderance of evidence that Cotte anticipates claim 7.
Claim 8
Patent Owner argues that Cotte does not “disclose embedding any software
as an embedded service.” PO Resp. 26. Patent Owner points to VC as an
embedded service in a third-party application. “‘For example, rather than have VC
as a separate application, a special button can be placed on a third-party application
that launches VC in the background as illustrated in FIG. 33.’” Id. at 27 (quoting
Ex. 1001, col. 73, ll. 43–49). Patent Owner contends that “Cotte’s pop-up window
is simply a user interface that is not an embedded service.” Id. In the Institution
Decision, we initially determined that “the computer management system software
is integrated with an external application and external device and application by
running part of it on the host and part of it on the external scanning device. See
Ex. 1011, Fig. 11A. Petitioner sufficiently shows that Cotte anticipates claim 8.”
Dec. on Inst. 29.
Patent Owner does not rebut the findings. Claim 8 does not require an
embedded service. Claim 8 recites two alternatives, “wherein the one or more of
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the external devices and applications integrates the computer data manage system
into an external application via one of running the computer data management
system, [1] as an external service and [2] embedding the computer data
management system.” Patent Owner does not dispute that Cotte’s computer data
management system is integrated with an external application, and runs as an
external service, as set forth in the Institution Decision.
Moreover, as discussed in the Claim Construction section above, in the
Institution Decision, and during the oral hearing, it is not clear how the memory
and processor hardware of the computer data management system, as recited in
claim 1, can be “embedded” as recited in claim 8. See Tr. 37:22–25; Dec. on Inst.
20. Patent Owner acknowledged during the oral argument that the hardware
recited in claim 1 must be read out of claim 8 for “embedded” to have a clear
meaning. See Tr. 37:22–25 (MR. GANTI: “Right, I think one of ordinary skill in
the art would know that that’s not a probable interpretation and it would be
impossible to understand a system that has hardware and embed that into a
system.”). It is not clear how the hardware and software can be “integrated into
an external application,” unless the “external application” includes software and
hardware. Cotte’s system includes integrated software and hardware, reasonably
constituting an external application, because it runs partly on the host and the
scanning input device.
Based on the foregoing discussion and record, Petitioner shows by a
preponderance of evidence that Cotte anticipates claim 8.
Claims 9–11
These claims depend from claim 7, which depends from claim 1, and further
limit “the server module.” As discussed in the Claim Construction section, and in
the Institution Decision, we determined that “the server module” lacks clear
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antecedent basis and implicitly refers back to “at least one module communicable”
in claim 1, under one claim interpretation. As also discussed in the Claim
Construction section, claim 1 does not require “at least one module
communicable,” because it recites “at least one of” “at least one input module” and
“at least one module communicable.” As noted, Patent Owner agrees that both
modules (see supra 1.3 and 1.4 of claim 1) are not required to satisfy claim 1, from
which claims 7–9 depend. See PO Resp. 5 (“Patent Owner generally will not take
issue with the Board except in the follow[ing] instances.”); Tr. 31:6–9; Ex. 2002
¶ 17.
Patent Owner’s arguments regarding claims 9 and 10 are directed to
functions recited with respect to the server module. PO Resp. 27–31. Patent
Owner does not argue claim 11 separately. Under the broadest reasonable claim
construction, claims 9–11 fail to limit claims 1 and 7, because “the server module,”
which refers under this construction to the “at least one module communicable,” is
claimed in the alternative to “at least one input module,” in claim 1. Therefore, the
recited dependent functions essentially describe alternative features that claims 9–
11 do not require necessarily.
Based on the foregoing discussion and record, Petitioner shows by a
preponderance of evidence that Cotte anticipates claims 9–11.
Claims 12 and 15
Claims 12 and 15 recite limitations that are similar to those addressed above
in connection with claim 5. Patent Owner argues that Cotte does not disclose a
“single function copy operation linking devices, applications and the internet” as
recited in claims 12 and 15. PO Resp. 33 (emphasis omitted). Patent Owner
argues that “because [Cotte’s] menu is directed to images that have already been
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scanned, the menu cannot be intended for ‘copying’.” Id. These arguments are
not persuasive.
Patent Owner does not explain how the recited “single function copy
operation linking devices,” as set forth in claims 12 and 15, precludes a menu
directed to images that already have been scanned or requires something more.
Cotte’s menu provides for copying scanned images. As noted, a similar limitation
is addressed above in connection with claim 5. For the reasons discussed above,
Cotte discloses the copying as set forth in claims 5, 12, and 15. Similar to the
discussion in connection with claim 5, claims 12 and 15 do not preclude electronic
copying after scanning, and even if they do, Cotte discloses pressing a button to
copy and send paper before scanning it. The demand letter, outlined above, asserts
that many familiar systems that send scanned images to an e-mail or other software
systems infringe claims 12 and 15. Cotte’s system performs scanning and sending,
in the same manner as the allegedly infringing systems described in the demand
letter. The Petition and Institution Decision outline how the claims read on Cotte’s
system. See Pet. 49–51; Dec. on Inst. 32– 33 (discussing the Petition). During the
oral hearing, Patent Owner contended that “[t]o the extent the Board will take that
demand letter into account, it should only be done so with respect to . . . claims 12
and 15.” Tr. 21:10–16.
Regarding the Internet limitation, Patent Owner maintains that Cotte copies
an image from a scanner via a single serial port. PO Resp. 33 (citing Ex. 2002
¶ 78). According to the discussion of claim 5, the record shows that skilled
artisans at the time of the invention would have recognized that sending e-mails
over wide area networks, or using satellite, packet radio, and ISDN transmission,
as Cotte discloses, at least implies the Internet.
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Based on the foregoing discussion and record, Petitioner shows by a
preponderance of evidence that Cotte anticipates claims 12 and 15.
Claim 13
Claim 13 recites “a list of available module means.” Citing Mr. Weadock’s
declaration, Patent Owner argues that Cotte does not disclose a list or a list that is
read on startup. PO Resp. 30. During the oral hearing, Petitioner was asked
“what’s the name [in the list] of the process module and server module [in the prior
art]?” See Tr. 52:1–2. Petitioner conceded “[t]here is no specific name.” Id. at
52:23–53:5.
Petitioner does not show that Cotte discloses the claimed list as required by
claim 13. In its Reply, Petitioner contends that “[c]laim 13 . . . only references
other modules in a manner that lacks antecedent basis.” Pet. Reply 7. Claim 13
references “said . . . modules,” however, Petitioner’s explanation falls short of
explaining how a list of modules cannot be afforded patentable weight. In its
Petition, Petitioner asserts that Cotte discloses a list of menu options “used at
startup of a copier.” Pet. 46 (citing Ex. 1011, col. 15, ll. 36–42, col. 18, ll. 43–51,
col. 22, ll. 53–61, col. 23, ll. 19–25; Ex. 1005 ¶ 308). Nevertheless, Petitioner does
not point out the specific list or show it is read on start-up. For example, the menu
cited at column 15, lines 36–42, appears to be generated in response to an interrupt
from the input device. See Ex. 1011, col. 15, ll. 30–32. Mr. Wibbels appears to
rely on inherency “in a Windows implementation,” Ex. 1005 ¶ 308, but Petitioner
does not provide a citation or persuasive evidence that shows that Cotte employs a
Windows implementation. See PO Resp. 31.
On this record, Petitioner does not show how Cotte discloses the claimed list
of modules, or the list read on start-up. Petitioner thus does not show by a
preponderance of evidence that Cotte anticipates claim 13.
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Claim 14
Claim 14 is similar in scope to claim 1. Patent Owner groups its arguments
regarding claims 1 and 14 together. See PO Resp. 12, 18, 20–21. Patent Owner’s
arguments are not persuasive, as explained above in connection with claim 1.
Based on the foregoing discussion and record, Petitioner shows by a
preponderance of evidence that Cotte anticipates claim 14.
2. SJ5
Based on the finding of anticipation by Cotte of claims 1–12, 14, and 15, it
is not necessary to reach the ground of anticipation of these claims by SJ5. On the
other hand, it is necessary to reach the ground of anticipation of claim 13 by SJ5.
Patent Owner makes a number of arguments regarding claim 13. PO Resp.
44–47. Petitioner does not respond to the arguments. For example, Patent Owner
asserts that SJ5 does not disclose “maintain a list of available module means for
maintaining a registry containing a list of said input, output, and process modules.”
PO Resp. 45 (emphasis omitted). Patent Owner also maintains that SJ5 does not
disclose the claim phrase “maintain currently active modules means for
maintaining said input, output, and process modules currently being used.” Id. at
46 (emphasis omitted). Patent Owner also contends that a list of destinations is not
the same thing as a “registry,” and that SJ5 fails to show a registration process or
even suggest that any software module is registered. Id.
Patent Owner also maintains that “SJ5 does not anticipate a server module
that includes ‘maintain complete document information means for maintaining
information regarding a current file being copied, and saving the information in a
document template file,’ as recited by claim[] . . . 13.” Id. at 47 (emphasis
omitted).
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As noted above, at the oral hearing, Petitioner was unable to specify the
relevant names for the process or server modules appearing in a list or lists recited.
See Tr. 52–53. The Petition generally refers to the analysis of claims 1, 2, and 7, to
address the limitations in claim 13. See Pet. 13. However, those claims recite
different elements. Petitioner fails, among other things, to specify the required lists
of modules. On this record, Petitioner does not specify clearly how SJ5 discloses
all the recited and argued elements. Based on the foregoing discussion, Petitioner
does not show by a preponderance of evidence that SJ5 anticipates claim 13.
III. CONCLUSION
Patent Owner does not present persuasive separate arguments for claims 3,
4, and 6. Patent Owner’s remaining arguments track arguments addressed above
and are not persuasive. Considering the record, including Petitioner’s showing in
the Petition and otherwise, and Patent Owner’s arguments and evidence, Petitioner
has demonstrated by a preponderance of evidence that Cotte anticipates claims 1–
12, 14, and 15. Petitioner has not demonstrated by a preponderance of evidence
that claim 13 is unpatentable.
IV. ORDER
In consideration of the foregoing, it is hereby
ORDERED that claims 1–12, 14, and 15 of U.S. Patent No. 6,771,381 B1
are unpatentable;
FURTHER ORDERED that, because this is a final decision, parties to the
proceeding seeking judicial review of the decision must comply with the notice
and service requirements of 37 C.F.R. § 90.2.

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For Petitioner:

Stuart Meyer
Jennifer Bush
Fenwick & West LLP
Smeyer@fenwick.com
jbush@fenwick.com

For Patent Owner:

Vivek A. Ganti
Scott Horstemeyer
N. Andrew Crain
THOMAS | HORSTEMEYER, LLP
vg@hkw-law.com
scott.horstemeyer@thomashorstemeyer.com
andrew.crain@thomashorstemeyer.com