Takeaway: The Board may consider a demand letter by patent owner in construing terms of the patent.

In its Final Written Decision, the Board found that claims 1-12, 14, and 15 of the ’381 Patent are unpatentable, but that Petitioner did not demonstrate by a preponderance of the evidence that claim 13 of the ’381 Patent is unpatentable. The ’381 Patent relates to a virtual copier (“VC”) system that 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.

The Board began with claim construction, stating that claims are given their broadest reasonable construction in light of the specification of the patent. The Board first reviewed the terms “at least one” or “at least one of.”  The Board adopted its interpretation from the Decision on Institution.  The Board then reviewed the term “said software application comprises at least one of: at least one input module . . . and at least one module communicable with” other modules.  The Board rejected Patent Owner’s construction as too narrow.  Next, the Board discussed the claim term “managing the electronic paper from at least one third-party software applications.”  Over the objection of Patent Owner, the Board adopted its construction from the Decision on Institution.  The Board then turned to the term “module.”  Again, over the objection of Patent Owner, the Board adopted its construction from the Decision on Institution.  The Board then construed various other terms contrary to the constructions provided by Patent Owner, partially based upon the constructions employed by Patent Owner in its demand letter to accused infringers.

The Board then discussed Patent Owner’s assertion that Petitioner’s expert is not a person of ordinary skill in the art. The Board found that Patent Owner’s assertions actually bolster the record evidence and show that Petitioner’s expert has experience and education in software, and that Patent Owner should have tested his testimony using cross-examination.

Next, the Board turned to the first ground of unpatentability – anticipation of claims 1-15 by Cotte. Finding Petitioner’s arguments and expert more persuasive than Patent Owner’s arguments and expert, and partially based upon the Board’s claim constructions, the Board agreed that Cotte anticipates all limitations of claims 1-12, 14 and 15 of the ’381 Patent.  Regarding claim 13, the Board found that Petitioner did not show that Cotte discloses the recited “list.”

The Board then turned to the second ground of unpatentability, anticipation by SJ5, noting that because it found unpatentability of claims 1-12, 14 and 15 based on Cotte, it did not have to reach the ground of anticipation of those claims by SJ5. The Board noted that Patent Owner made a number of arguments regarding claim 13 to which Petitioner did not respond.  The Board found that Petitioner failed to specify how SJ5 discloses the required list of modules recited in claim 13.

Hewlett-Packard Co. v. MPHJ Technology Investments, LLC, IPR2013-00309
Paper 35: Final Written Decision
Dated: November 19, 2014
Patent: 6,771,381 B1
Before: Michael P. Tierney, Karl D. Easthom, and Gregg I. Anderson
Written by: Easthom
Related Proceedings: Engineering & Inspection Services, LLC v. IntPar, LLC, No. 13-0801 (E.D. La.); Vermont v. MPHJ Tech. Investments LLC, No. 282-5-13 (Ver. Sup. Ct.); IPR2013-00302