Trials@uspto.

gov
571.272.7822

Paper No. 7
Filed: August 29, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE

_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
UNIFIED PATENTS INC.
Petitioner,
v.
RUBY SANDS LLC
Patent Owner.
_______________
Case IPR2016-00723
Patent 6,891,633 B1
_______________

Before TRENTON A. WARD, GEORGIANNA W. BRADEN, and

MONICA S. ULLAGADDI, Administrative Patent Judges.
ULLAGADDI, Administrative Patent Judge.

DECISION
Institution of Inter Partes Review
37 C.F.R. 42.108

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Patent 6,891,633 B1
I. INTRODUCTION
A. Background
Unified Patents Inc. (Petitioner) filed a Petition (Paper 1, Pet.) for
inter partes review of claims 126 of U.S. Patent No. 6,891,633 B1 (Ex.
1001, the 633 patent). Ruby Sands LLC (Patent Owner) timely filed a
Preliminary Response (Paper 6, Prelim. Resp.). We have jurisdiction
under 35 U.S.C. 6. Under 35 U.S.C. 314(a), an inter partes review may
not be instituted unless . . . there is a reasonable likelihood that the
petitioner would prevail with respect to at least 1 of the claims challenged in
the petition.
Upon consideration of the Petition, the Petitions supporting evidence,
and Patent Owners Preliminary Response, and for the purposes of this
decision, we are persuaded Petitioner has established a reasonable likelihood
it would prevail with respect to at least one of the challenged claims. For the
reasons that follow, we institute an inter partes review of the 633 patent as
to challenged claims 118 and 2126 and we deny institution as to
challenged claims 19 and 20.
B. Related Proceedings
Petitioner and Patent Owner inform us that the 633 patent is at issue
in the following lawsuits filed in the Eastern District of Texas: Ruby Sands
LLC v. Amegy Bank, N.A., Case No. 15-1936 (E.D. Tex.); Ruby Sands LLC
v. Independent Bank Group, Inc., Case No. 15-2007 (E.D. Tex.); Ruby Sands
LLC v. Cathay Bank, Case No. 15-1961 (E.D. Tex.); Ruby Sands LLC v.
Fidelity Investments, Case No. 15-1985 (E.D. Tex.); Ruby Sands LLC v.
Bank of Texas, Case No. 15-1959 (E.D. Tex.); Ruby Sands LLC v. First
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National Bank of Texas, Case No. 15-1987 (E.D. Tex.); Ruby Sands LLC v.
NetSpend Corporation, Case No. 15-2015 (E.D. Tex.); Ruby Sands LLC v.
American National Bank of Texas, Case No. 15-1955 (E.D. Tex.); Ruby
Sands LLC v. Extraco Banks, Case No. 15-1976 (E.D. Tex.); Ruby Sands
LLC v. Texas Capital Bank, N.A., Case No. 15-2023 (E.D. Tex.); Ruby
Sands LLC v. Patriot Bank, Case No. 15-2020 (E.D. Tex.); Ruby Sands LLC
v. Bank of Internet USA, Case No. 15-1957 (E.D. Tex.); Ruby Sands LLC v.
Charles Schwab Corporation, Case No. 15-1963(E.D. Tex.); Ruby Sands
LLC v. Comerica Bank, Case No. 15-1968 (E.D. Tex.); Ruby Sands LLC v.
Plains Capital Bank, Case No. 15-2016 (E.D. Tex.); Ruby Sands LLC v.
CommunityBank of Texas, NA, Case No. 15-1975 (E.D. Tex.); Ruby Sands
LLC v. Citizens National Bank, Case No. 15-1966 (E.D. Tex.); Ruby Sands
LLC v. Ally Bank, Case No. 15-1935 (E.D. Tex.); Ruby Sands LLC v.
Commercial Bank of Texas, N.A., Case No. 15-1971(E.D. Tex.); Ruby Sands
LLC v. J.P. Morgan Chase Bank, NA, Case No. 15-1965 (E.D. Tex.); Ruby
Sands LLC v. Woodforest Bank, Case No. 15-2026 (E.D. Tex.). Pet. 12;
see Paper 4, 12.
C. The 633 Patent
The 633 patent discloses an apparatus and method for displaying an
image transfer menu for affecting transfer of [an] image. Ex. 1001,
Abstract. Figure 1 of the 633 patent, reproduced below, depicts image
transfer system 10 as including image transfer device 12 that is connected to
computer 14 by removable cable 36. Id. at 3:1417.

IPR2016-00723
Patent 6,891,633 B1

Figure 1 of the 633 patent

According to the 633 patent, image transfer device 12 includes

reader 18, central processing unit (CPU) 20, memory 22, display 24, user
interface 26, and preferably includes print head 28 and communication
device 30. Id. at 3:1822. Reader 18 reads a printed image on medium 100,
print head 28 prints an image on medium 102, and communication device 30
transmits and receives images between image transfer device 12 and one or
more other image transfer devices 300. Id. at 3:2227. Thus, image transfer
device 12 may include capabilities of a computer printer, a copier, a
facsimile, or an optical scanner. Id. at 3:5354.
In a preferred embodiment, display 24 incorporates an active or
touch display 50, within which CPU 20 displays the operating menu 48 of
the device. Id. at 6:1114. A user may interact with feature or command
buttons 52 included in operating menu 48 by touching display 50 or by using
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user interface 26. Id. at 6:1521. The 633 patent teaches a basic operating
menu and an enhanced operating menu, each of which specifies commands
for effecting functions by image transfer device 12. Id. at Tables 1, 2.
1. Basic Operating Menu
Memory 22 stores basic program 200 that has a module 202 which
defines the basic operating menu available for display by the CPU 20 on the
display 50 when the computer 14 is not connected to the device 12. Id. at
6:5760. Basic program 200 also includes program module 204 that
instructs CPU 20 of image transfer device 12 to perform functions
corresponding to commands in the basic operating menu. Id. at 6:6064.
Only the basic operating menu is available for display when computer
14 is not energized or connected to image transfer device 12. Id. at 9:1318.
In this unconnected state, the enhanced operating menu is neither accessible
nor visible on display 50 of image transfer device 12. Id. at 14:3537.
2. Enhanced Operating Menu
The enhanced operating menu is available to be displayed by the
CPU 20 on the display 50 of the device 12 when the computer 14 is
energized and connected to the device 12. Id. at 9:1316. The enhanced
operating menu is defined by program 212 included in enhanced program
210. Id. at 8:6466. Figure 3, reproduced below, depicts an embodiment in
which enhanced program 210 is stored in memory 22 of image transfer
device 12. Id. at Fig. 3; see id. at 8:6063.

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Patent 6,891,633 B1

Figure 3 of the 633 patent

Figure 7, reproduced below, depicts another embodiment in which
enhanced program 210C is stored in computer memory 34C of computer 14.
Id. at Fig. 7; see id. at 12:5355.

IPR2016-00723
Patent 6,891,633 B1

Figure 7 of the 633 patent

Enhanced program 210 is available to be loaded in CPU 20 when
computer 14 is energized and connected via cable 36 to image transfer
device 12. Id. at 9:69. In addition to making the enhanced operating menu
available for display, enhanced program 210 instructs CPU 20 of image
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Patent 6,891,633 B1
transfer device 12 to perform functions corresponding to commands in the
enhanced operating menu. See id. at 9:116.
3. Selecting from the Enhanced Operating Menu
When computer 14 is connected to image transfer device 12, image
transfer device 12 may use the software and memory of computer 14 to
perform functions corresponding to commands in the enhanced operating
menu. See id. at 3:6366. For example, the 633 patent describes
select[ing] from the enhanced menu to operate the device 12 in the copier
mode with collation of copies via command buttons on touch display 50.
Id. at 13:2934. CPU 20 of image transfer device 12 sends the image data
from reader 18 to computer processor 32C, preferably along with a signal
that indicates which of the extended image transfer command options in the
enhanced operating menu is to be effected. Id. at 13:2529. In one
example, CPU 20 recognizes activation of the command buttons on touch
display 50 and sends a signal to computer processor 32C indicating that the
collating function is to be performed. Id. at 13:3436.
To effect the collating function, the computer processor 32C
automatically stores the series of images read by the reader 18 and then
generates sequential copies of the series of images in order to form a collated
series of images in electronic form. Id. at 13:4750. Computer processor
32C creates the collated series of images without user interaction. Id. at
13:5052. Subsequently, computer processor 32C automatically sends
each [collated] series of images to the print head 28 of the device 12 without
user interaction. Id. at 13:5254.
Computer memories 34A,B,C store bitmaps and coordinates for time
and date, company name, fixed message (e.g., Confidential Document),
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logo, and watermark images that are used to effect certain enhanced
operating menu functions. Id. at Figs. 3, 5, 7; see id. at 11:5662. In one
embodiment, computer memory 34A also stores telephone numbers in
excess of the maximum number associated with the basic operating menu.
Id. at Fig. 3.
D. Illustrative Claims
As noted above, Petitioner challenges claims 126 of the 633 patent,
of which claims 1, 12, 14, 19, 21, and 25 are independent claims. Claims 1
and 19 are illustrative of the challenged claims and are reproduced below
(with paragraphing and reference lettering added):
1. An electronic assembly comprising;
[A] a first image transfer device for reading and transferring an
image from a first medium,
[B] the first image transfer device including a reader for reading
the image on the first medium, and a display exclusively used by
the image transfer device for displaying an image transfer menu
for effecting transfer of the image between the first image
transfer device and another image transfer device; and
[C] a computer removably connected, to the first image transfer
device;
[D] wherein when the first image transfer device is not connected
to the computer the first image transfer device has a first type of
the image transfer menu available for display on the display of
the device, and
[E] wherein when the first image transfer device is connected to
the computer the transfer device has a second type of the image
transfer menu available for display on the display of the device
wherein a first portion of the second type of the image transfer
menu is stored in the computer.
Id. at 15:5116:4.

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Patent 6,891,633 B1
19. A method for transferring information from a first medium,
the method comprising the steps of:
[A] providing an image transfer device having a scanner for
reading an image on the first medium;
[B] reading the image on the first medium with the scanner;
[C] automatically uploading electronic data including at least a
portion of an image transfer menu to be displayed by the image
transfer device to the transfer device from a computer connected
to the transfer device;
[D] with a processor of the image transfer device, automatically
merging the electronic data with the image read by the scanner;
and
[E] transferring the merged image by the transfer device to a
second medium.
Id. at 18:720.
E. The Evidence of Record
Petitioner relies upon the following references, as well as the
Declaration of Herbert Cohen (Ex. 1003):
Reference Patent/Printed Publication
Filing Date
Matsumoto US Patent No. 6,373,598 B1 Nov. 18, 1996

Exhibit(s)
1004

Fite, Jr.

US Patent No. 5,666,489

July 6, 1994

1005

Xerox

Xerox WorkCentre Pro

635/645/657 User Guide

1006

Motoyama

US Patent No. 5,701,184

Published in US
on or before
June 15, 1998
June 25, 1996

Shiimori

US Patent No. 7,315,386 B1

June 30, 1998

1009

Ebner

US Patent No. 5,452,094

Nov. 5, 1992

1010

10

and 1007
1008

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Patent 6,891,633 B1
F. The Asserted Grounds of Unpatentability
Petitioner challenges the patentability of claims 126 of the 633
patent based on the following grounds:
References
Matsumoto
Matsumoto, Xerox, Fite, and
Ebner
Fite, Xerox, Ebner, and
Motoyama
Motoyama
Shiimori

Basis
102(e)
103(a)

Claims Challenged
118 and 2126
118 and 2126

103(a)

118 and 2126

102(b)

19 and 20

102(e)

19 and 20

II. DISCUSSION
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. 42.100(b); see
also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 214446 (2016)
(upholding the use of the broadest reasonable construction standard). Under
that standard, and absent any special definitions, we give claim terms their
ordinary and customary meaning, as would be understood by one of ordinary
skill in the art at the time of the invention. In re Translogic Tech., Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007). Claim terms need only be interpreted to
the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am.
Sci. & Engg, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).

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1. image transfer menu
Claims 1, 36, 9, 12, 13, and 19 recite an image transfer menu.
Ex. 1001, 1518. The term image transfer menu appears only in the
claims of the 633 patent. See generally Ex. 1001. Petitioner proposes that
the term image transfer menu be construed to mean a list of options or
commands related to the function or operation of the device. Pet. 6 (citing
Ex. 1001, 7:148, 6:811). Petitioner argues that dependent claims 6 and 8
of the 633 patent support its construction because none of the requirements
for the menus recited in claims 6 and 8 relate to image transfer. Id. Based
on dependent claims 6 and 8 and Tables 1 and 2 (depicting basic and
enhanced operating menus), Petitioner argues the term image transfer
menu is not limited to options or commands for transferring images but
rather relates to any function or operation of the device. Id.
Patent Owner does not propose a construction for this or any other
claim term. Prelim Resp. 28. Patent Owner notes, however, that claim 1,
from which claims 6 and 8 depend, requires the image transfer menu to be
used to transfer an image and argues that Petitioners construction reads out
image transfer from the term. Id. at 34. Patent Owner further argues
Petitioners construction reads in limitations from the specification. Id. at 3.
We determine that both of Patent Owners arguments are persuasive.
See id. at 34. Here, the 633 patent does not explicitly define image
transfer menu nor describe either of the basic and enhanced operating
menus as exemplary of an image transfer menu. See generally Ex. 1001.
Merely because the specification describes basic and enhanced operating
menus is not a sufficient basis for construing image transfer menu as
broadly as relat[ing] to any function or operation of the device. See Pet. 6
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(emphasis omitted). Additionally, we are not persuaded by Petitioners
argument regarding the features recited in dependent claims 6 and 8
encompassed by the image transfer menu, because the effect of adopting
Petitioners proposed construction would broaden the scope of this term to
the point where the phrase image transfer would have no limiting effect on
the menu.
Although the 633 patent does not use the term image transfer menu
except in the claims, the 633 patent describes extended image transfer
functions and extended image transfer command options in connection
with the enhanced operating menu. Ex. 1001, 13:1724. The 633 patent
describes computer processor 32C automatically manipulating data and
printing to perform a collating function, which is described as a selected
image transfer function. Id. at 13:3645. In connection with a user selection
from the enhanced operating menu, the 633 patent further describes
computer processor 32C as automatically merging a bitmap with image data
to add a fixed message to subsequently printed copies. Id. at 13:5667; see
id. at 11:4047.
In both of these examples, image data is exchanged between image
transfer device 12 and computer 14. Id. at 13:2543 (The CPU 20 then
downloads the image data from the reader 18 to the computer processor 32C.
. . . Then, the computer processor 32C automatically sends the now
manipulated data back to the device 12 without user interaction.); id. at
13:4754 ([T]he computer processor 32C automatically stores the series of
images read by the reader 18 . . . . Then, the computer processor 32C
automatically sends each series of images to the print head 28 of the device
12 also without user interaction.). The 633 patent also describes
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communicating image data to and from one or more image transfer devices
300 via a facsimile capability of image transfer device 12. Id. at 3:5363,
4:5462.
The dictionary definition for the term menu is a list, displayed as
on a computer video screen, of the various functions available for selection
by the user. Websters New World College Dictionary 4th Edition, 1999
(Ex. 3001). Given the disclosure of communicating image data among
image transfer device 12, computer 14, and image transfer devices 300 in the
633 patent, the ordinary meaning of the term menu as would have been
understood by one of ordinary skill in the art, and based on the record before
us, we determine the broadest reasonable interpretation of image transfer
menu, for purposes of this decision, to encompass a list, displayed on a
screen of a first computing device, of available functions selectable by a
user, including a function that necessitates either one or both of transmitting
image data and receiving image data.
B. Principles of Law
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
A claim is unpatentable under 35 U.S.C. 103(a) if the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Intl Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
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factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1,
1718 (1966). In an [inter partes review], the petitioner has the burden
from the onset to show with particularity why the patent it challenges is
unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. 312(a)(3) (requiring inter partes review
petitions to identify with particularity . . . the evidence that supports the
grounds for the challenge to each claim)). This burden never shifts to
Patent Owner. See Dynamic Drinkware, LLC v. Natl Graphics, Inc., 800
F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
Inc., 545 F.3d 1316, 132627 (Fed. Cir. 2008)) (discussing the burden of
proof in inter partes review). Furthermore, Petitioner cannot satisfy its
burden of proving obviousness by employing mere conclusory statements.
In re Magnum Oil Tools Intl, Ltd., No. 2015-1300, slip op. at 25 (Fed. Cir.
July 25, 2016).
Thus, to prevail in an inter partes review, Petitioner must explain how
the proposed combinations of prior art would have rendered the challenged
claims unpatentable. At this preliminary stage, we determine whether the
information presented in the Petition shows there is a reasonable likelihood
that Petitioner would prevail in establishing that one of the challenged
claims would have been obvious over the proposed combinations of prior
art.
We analyze the challenges presented in the Petition in accordance
with the above-stated principles.
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C. Level of Ordinary Skill in the Art
In determining whether an invention would have been obvious at the
time it was made, we consider the level of ordinary skill in the pertinent art
at the time of the invention. Graham, 383 U.S. at 17. The importance of
resolving the level of ordinary skill in the art lies in the necessity of
maintaining objectivity in the obviousness inquiry. Ryko Mfg. Co. v. NuStar, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
Petitioners Declarant, Mr. Cohen, testifies that a person of ordinary
skill in the art relevant to the 633 patent would have had (i) a B.S. degree
in electrical engineering, computer engineering, computer science, or
equivalent training, and (ii) approximately two years of experience in
designing of embedded communication systems. Ex. 1003 14. Patent
Owner does not offer any contrary explanation regarding who would qualify
as a person of ordinary skill in the art relevant to the 633 patent. See
generally Prelim. Resp.
Based on our review of the 633 patent, the types of problems and
solutions described in the 633 patent and cited prior art, and the testimony
of Petitioners Declarant, we adopt and apply Petitioners definition of a
person of ordinary skill in the art at the time of the claimed invention. We
note that the applied prior art reflects the appropriate level of skill at the time
of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001).
D. Alleged Anticipation based on Matsumoto
Petitioner contends claims 118 and 2126 of the 633 patent are
anticipated under 35 U.S.C. 102(e) by Matsumoto. Pet. 934. Patent

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Owner disputes Petitioners contention. Prelim. Resp. 928. For the reasons
that follow, we determine Petitioner has not demonstrated a reasonable
likelihood of prevailing as to this ground.
1. Overview of Matsumoto
Matsumoto discloses systems and methods that extend the
functionality of a facsimile machine by using a storage area of a personal
computer connected to the facsimile machine. See Ex. 1004, 2:2227; see
id. at 10:5911:3. Figure 1 of Matsumoto, reproduced below, illustrates a
facsimile system including facsimile machine 1 connected to personal
computer 2 using cable 4.

Figure 1 of Matsumoto illustrates a facsimile system.

According to Matsumoto, application software relates to control
programs that control the execution of various functions by facsimile
machine 1. Id. at 6:5861. Hard disk 39 of Matsumotos personal computer
2 stores both the application software and a control program that controls the
execution of a particular function of facsimile machine 1. Id. at 7:16.
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Matsumoto also describes a basic control program, stored in Read-only
Memory (ROM) 13 of facsimile machine 1, that controls transmission and
reception of data to and from the telephone line 6 and also stores a data
transfer control program for a data transfer between the facsimile machine 1
and the personal computer 2. Id. at 6:647:1.
Matsumoto also addresses problems associated with displaying an
increasingly lengthy help list on the facsimile machines liquid crystal
display (LCD). Id. at 2:19. When personal computer 2 is powered on and
connected to facsimile machine 1, the help list is: (i) printed by printer 18 or
displayed by LCD 22 on operation panel 21, each of which is associated
with facsimile machine 1; or (ii) displayed by display 36 or printed by
printer 37, each of which is associated with personal computer 2. Id. at 9:5
13. Matsumoto also describes how the facsimile machines operation panel
20 has numeral keys 23, function keys 24, and one-touch registration key 25,
and how display 22 displays operation conditions of the facsimile
machine. Id. at 6:2933.
2. Analysis of Independent Claims 1 and 12
a. Claim 1[D]: wherein when the first
image transfer device is not connected to
the computer the first image transfer
device has a first type of the image
transfer menu available for display on the
display of the device
With respect to claim 1[D], Petitioner argues that Matsumoto
discloses a basic control program for transmission and reception of data to
and from the telephone line 6 that is stored in ROM 13 of facsimile
machine 1. Pet. 12 (citing Ex. 1004, 6:6466). Petitioner asserts [o]ne of
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ordinary skill in the art would understand that the facsimile machine 1 can
carry out basic transmission operations without being connected to a
computer. Id. Citing the testimony of Mr. Cohen, Petitioner contends a
typical user would likely have used their FAX machine, like the one in
Matsumoto, for basic functions/features in standalone mode and may never
actually connect it to a PC unless advanced features are required. Id.
(citing Ex. 1003 48).
In connection with Matsumotos facsimile machine 1 and basic
control program, Petitioner does not sufficiently establish which element
corresponds to a first type of the image transfer menu as recited in claim
1[D]. See id. With respect to claim 1[B], however, Petitioner argues
[a]lthough Matsumoto does not expressly state so, one of ordinary skill in
the art understands that Matsumoto would necessarily include an image
transfer menu associated with the transmission and reception operation
between facsimile machines 1 and 9. Id. at 10.
At the outset, we note that Matsumoto does not disclose expressly that
the basic control program controls facsimile machine 1 to carry out the
transmission and reception of data when facsimile machine 1 is not
connected to personal computer 2. See generally Ex. 1004. More generally,
Matsumoto does not disclose expressly that facsimile machine 1 operates in
a standalone mode. Id. Furthermore, consistent with Petitioners argument,
Matsumoto does not disclose expressly a menu associated with either the
basic control program or the transmission and reception of data. Id.; see
Pet. 10.
Although Petitioner does not rely explicitly on inherency, we consider
it here for the purpose of completeness. If a prior art reference does not
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expressly set forth a particular element of the claim, the reference still may
anticipate if that element is inherent in its disclosure. Trintec Indus., Inc.
v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002). Our reviewing
court has held that
[t]o establish inherency, the extrinsic evidence must make clear
that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so
recognized by persons of ordinary skill. Inherency, however,
may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of
circumstances is not sufficient.
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal
quotations omitted).
To the extent that Petitioner argues that Matsumoto discloses
inherently that facsimile machine 1 operates in a standalone mode and
carries out transmission and reception of data when not connected to
personal computer 2, Petitioner does not demonstrate that the transmission
and reception of data controlled by the basic control program is necessarily
accomplished without personal computer 2. See Pet. 12; Ex. 1003 48.
Instead, Petitioner merely relies upon the existence of a possibility that a
typical user may have used a facsimile machine in standalone mode and that
the ordinarily skilled artisan would have understood that Matsumotos
facsimile machine 1 can carry out basic transmission operations without
being connected to a computer. Pet. 12 (emphasis added).
We are unpersuaded by Petitioners position, because irrespective of
how likely an outcome may be, inherency may not be established by
probabilities or possibilities, and [t]he mere fact that a certain thing may
result from a given set of circumstances is not sufficient. Robertson, 169
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F.3d at 745 (internal quotations omitted). The testimony of Mr. Cohen
simply reiterates the Petition and does not cite to any additional extrinsic
evidence that would lend the requisite certainty to make Petitioners
assertions more than a mere possibility, as would be required to establish an
inherent disclosure in an anticipating reference. Compare Pet. 12, with
Ex. 1003 48.
Even assuming, without deciding, for the purposes of this argument,
Matsumoto discloses inherently an image transfer menu associated with
the transmission and reception operation between facsimile machines 1 and
9 as Petitioner contends with respect to claim 1[B] (see Pet. 10), Petitioner
does not demonstrate satisfactorily that Matsumoto discloses inherently that
the image transfer menu is available for display on the display of the device
when the first image transfer device is not connected to the computer, as
required by claim 1[D]. See id. at 12.
b. Claim 1[E]: wherein when the first
image transfer device is connected to the
computer the transfer device has a second
type of the image transfer menu available
for display on the display of the device
wherein a first portion of the second type
of the image transfer menu is stored in the
computer
With respect to claim 1[E], Petitioner concludes this claim limitation
is met based on the following arguments. First, Petitioner argues Matsumoto
requires an image transfer menu to operate the facsimile machine (a first
type of the image transfer menu available for display on the display of the
device), and thus, Matsumotos additional functions are associated with
menus that are displayed on the facsimile machine (a second type of the
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image transfer menu available for display on the display of the device). See
id. at 10, 1314. Second, Petitioner argues Matsumoto discloses that the
menus associated with the additional functions are stored on the personal
computer (a first portion of the second type of the image transfer menu is
stored in the computer). Id. at 14.
Third, Petitioner argues an alternative interpretation in which this
claim limitation is met by Matsumotos detailed help list (a second type of
the image transfer menu available for display on the display of the device)
stored on the hard disk of the personal computer (a first portion of the
second type of the image transfer menu is stored in the computer). Id. We
address each of Petitioners arguments in turn.
(1) Matsumotos Operations Panel and Function Keys
First, Petitioner argues Matsumotos facsimile machine 1 must be
operated using the function keys 23/24 and display 22 of the [facsimile]
machines operations panel 21 in order to execute a function stored in the
hard disk 39 of the computer 2. Id. at 13 (citing Ex. 1003 50). According
to Petitioner, without a menu providing the user with the ability to select a
function associated with a software application stored on the computer, it
would be very difficult to access or execute those functions. Id. at 1314.
Patent Owner argues Matsumotos operations panel 21 and function
keys 24 are physical items and therefore are not display[ed] on the display
of the image transfer device as is the claimed image transfer menu. See
Prelim. Resp. 13, 15. We agree that Petitioner does not demonstrate that
Matsumotos operations panel 21 and function keys 24 themselves function
as a menu or are disclosed expressly in connection with a menu. See
Pet. 1314; see generally Ex. 1004.
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To the extent that Petitioners argument regarding the difficulty of
accessing or executing functions without a menu constitutes an argument
that the claimed first type of the image transfer menu is disclosed
inherently in Matsumoto, Petitioner does not demonstrate that a menu is
necessarily required to access and execute the functions. See generally
Pet. 1314; see Prelim. Resp. 1213. The testimony of Mr. Cohen is not
persuasive because it does not explain why Matsumotos operations panel
21, numeral keys 23, function keys 24, and one-touch registration key 25
could not operate facsimile machine 1, independently of a menu, for
carrying out the disclosed basic transmission and reception of data. See
Ex. 1003 49, 50.
(2) Matsumotos Additional Functions Stored on Personal
Computer
Second, Petitioner argues Matsumoto discloses menus associated
with the additional functions stored on the computer 2, such as for example
the multi-copying function and the scheduled/delayed transmission
function. Pet. 14 (internal quotations omitted).
Even assuming, without deciding, for the purposes of this argument
that Matsumoto discloses inherently the claimed image transfer menu,
Petitioner does not explain why menus associated with the additional
functions stored on the computer 2 would necessarily be available for
display on LCD 22 of facsimile machine 1, instead of display 36 of personal
computer 2. See id. at 1314. Petitioner does not persuade us Matsumoto
discloses, expressly or inherently, that a menu associated with the additional
functions, if any, would be available for display on the display of the
device, and a first portion of which would be stored in the computer, as
required by claim 1[E].
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(3) Matsumotos Basic Help List and Detailed Help List
Third, Petitioner proposes Matsumoto expressly teaches that a
detailed help list (which can also be considered a second type of the image
transfer menu) and a program (application software) for manipulation of
the help list are installed and stored on the hard disk 39 of the computer.
Pet. 14. Petitioner further contends that, [w]hen the computer and facsimile
machine are connected, the help list as stored in the hard disk 39 of the
personal computer 2 is transferred to the facsimile machine 1 to . . . [be]
displayed in the LCD 22 of the fax machine 1. Id.
Matsumoto does not define explicitly a help list but discloses
displaying the same on display 36 of personal computer 2, [w]hen a user
depresses a help key to know how to set and how to use various functions of
the facsimile machine. Ex. 1004, 8:5154. As such, Petitioner does not
demonstrate sufficiently that Matsumotos help list constitutes a menu, let
alone an image transfer menu and the second type of the image transfer
menu required by claim 1[E].
For the foregoing reasons, Petitioner does not establish that the
limitations recited in claim 1[D] and 1[E] are disclosed, either expressly or
inherently, in Matsumoto. Claim 12 recites substantially similar limitations.
Petitioner refers to the analysis of claim 1 to teach the limitations recited in
claim 12. Pet. 24. Thus, Petitioner does not establish that the similar
limitations of claim 12 are disclosed, either expressly or inherently, in
Matsumoto for substantially similar reasons.

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3. Analysis of Independent Claim 14
Claim 14[D]: wherein the display displays a first
one of the menus when the computer is not
connected to the apparatus
Petitioner refers to the analysis of claim 1[B] and 1[D] to teach the
limitation recited in claim 14[D]. Id. at 26. For the reasons discussed above
with respect to claim 1[D] and claim 1[B], Petitioner does not establish that
the limitation recited in claim 14[D] is disclosed, either expressly or
inherently, in Matsumoto.
4. Analysis of Independent Claims 21 and 25
Claim 21[D]: with the computer, enabling the
device to display a second command menu when the
computer is connected to the device, the second
command menu representing a second set of the
operating features of the device, wherein the second
set of operating features has at least one feature of
the first set of operating features and expanded
operating features in comparison to the first set of
operating features of the device, and wherein a
portion of the second command menu is stored on
the computer
Petitioner refers to the analysis of claim 1[E], as well as the analysis
of claims 4 and 5 and asserts Matsumoto and Xerox teach a portion of the
limitation recited in claim 21[D] and Matsumoto discloses a different
portion of the limitation recited in claim 21[D]. Id. at 3031. For the
reasons discussed above with respect to claim 1[E], and because Xerox
cannot be relied on to teach a limitation missing in Matsumoto in an
anticipatory challenge based on Matsumoto, Petitioner does not establish

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that the limitation recited in claim 21[D] is disclosed, either expressly or
inherently, in Matsumoto.
Claim 25 recites substantially similar limitations. Petitioner refers to
the analysis of claim 21 and claim 1[E] to teach the limitations recited in
claim 25. Id. at 33. Thus, Petitioner fails to establish that the similar
limitation of claim 25 is disclosed, either expressly or inherently, in
Matsumoto for substantially similar reasons.
5. Summary
We determine Petitioner does not establish that: the limitations recited
in claim 1[D] and 1[E] and the similar limitations of claim 12; the limitation
recited in claim 14[D]; and the limitation recited in claim 21[D] and the
similar limitation of claim 25 are disclosed, either expressly or inherently, in
Matsumoto. Accordingly, Petitioner does not establish that the limitations
of claims 211, 13, 1518, 2224, and 26, which depend respectively from
claims 1, 12, 14, 21, and 25, are disclosed, either expressly or inherently, in
Matsumoto.
On this record and for purposes of this decision, Petitioner fails to
establish a reasonable likelihood it would prevail in showing that claims 1
18 and 2126 are anticipated under 35 U.S.C. 102 by Matsumoto.
E. Alleged Obviousness over Matsumoto in view of Xerox, Fite, and Ebner
Petitioner contends that claims 118 and 2126 of the 633 patent are
unpatentable under 35 U.S.C. 103(a) over Matsumoto in view of Xerox,

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Fite, and Ebner.1 Pet. 934. Patent Owner disputes Petitioners contention.
Prelim. Resp. 928. For the reasons that follow, we determine that
Petitioner has demonstrated a reasonable likelihood of prevailing as to these
claims.
1. Overview of Matsumoto
See Section II.D.1.
2. Overview of Xerox
Xerox is a user guide describing send, receive, copy, print, and
PC-related features of a Document WorkCentre Pro 635/645/657 machine.
Ex. 1006, 2-1. Xerox further discloses programming a menu feature (id. at
4-3) and a hierarchical menu flow map (id. at 4-4). Xerox discloses a
memory send transmission mode in which a job is scanned into memory
prior to being sent to a remote party. Id. at 2-17. A direct send
transmission mode transmits a job without storing the pages of the job in
memory. Id. Xerox also discloses selecting time and date options
associated with a delayed start transmission. Id. at 8-8. Xerox further
discloses making copies and associated options, including collating. Id. at 51.

Petitioner relies on Matsumoto and Xerox for challenging each of claims

118 and 2126 of the 633 patent. See generally Pet. 934. Petitioner only
relies on Fite for the challenge against dependent claim 11 (see id. at 2324)
and Ebner for the challenges against dependent claims 8 and 24 (see id. at
2021, 3233).
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3. Overview of Fite
Fite describes an office machine, for example, a fax machine, that
operates in an enhanced mode using the resources of an available personal
computer, and in a standalone mode, if the personal computer is not
available. Ex. 1005, Abstract. Fite addresses limitations of office machines
that have limited memory, processor, and long term storage capabilities. Id.
at 1:1619. In Figure 1, reproduced below, Fite depicts PC 10 in
communication with fax machine 12.

Figure 1 of Fite
In Fites Figure 1, fax machine 12 includes PC interface 20, capability
determination module 22, standard protocol module 24, and enhanced
protocol module 26. Id. at 4:2528.
PC interface 20 establishes communication and relays information on
capabilities and messages to and from PC 10. Id. at 4:2831. PC interface
20 enables capabilities determination module 22 to determine whether the
resources of PC 10 are available and if so, which enhanced capabilities are
provided. Id. at 4:3134, 4:4850. Fite describes capabilities of PC 10 as

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providing access to the hard disk and all data stored therein, improved
resolution of images, scanning and printing using the PC, remote
administration of office machines, etc. Id. at 4:1519. Fite describes these
capabilities as supporting features including secure messaging, binary file
transfer, and inbound routing to a PC network. Id. at 4:1922.
Fite describes how enhanced protocol module 26 handles message
transfer if PC 10 is available and standard protocol module 24 handles
message transfer otherwise. Id. at 4:4858. As an example of using the
resources of PC 10 to transfer messages, Fite describes attaching a file stored
on disk 18 of PC 10 to a fax sent by fax machine 12. Id. at 4:3440.
Fite also describes Remote Procedure Call (RPC) module 50 resident
in PC 10 that sends fax capabilities to fax machine 12 and RPC module 52
resident in fax machine 12 that requests capabilities of PC 10. Id. at 6:814.
The capabilities of PC 10 are added to the capabilities data store 72, which
is a data structure in the form of a list of capabilities. Id. at 7:57.
4. Overview of Ebner
Ebner discloses storing and retrieving, for example, logos or
letterheads, for incorporation into larger document images. Ex. 1010,
Abstract. The storage capacity of a personal computer is utilized for storing
logo images. See id. When a merge print mode is selected, a video data
stream controller of image processing system (IPS) 12 receives logo image
data from logo storage means 25, merges the logo image data with a scanned
original image in real time, and sends a resulting merged video data stream
to a print engine. Id. at 9:5259. A merged image is then printed and output
by the print engine. Id. at 9:5960.

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5. Analysis of Independent Claims 1 and 12
a. Claim 1[A]: a first image transfer device
for reading and transferring an image
from a first medium
b. Claim 1[B]: the first image transfer
device including a reader for reading the
image on the first medium, and a display
exclusively used by the image transfer
device for displaying an image transfer
menu for effecting transfer of the image
between the first image transfer device
and another image transfer device
With respect to claim 1[A] and claim 1[B] and substantially similar
limitations of claim 12, Petitioner argues Matsumotos facsimile machine 1
includes scanner 16 corresponding to the claimed reader and display 22
for displaying operation conditions. Pet. 10. More particularly, Petitioner
argues Matsumotos facsimile machine 1 communicates with another device
9 and provides the user with various image transfer options, including
communication and memory transmission functions. Id. (citing
Ex. 1004, 2:3541).
According to Petitioner, Matsumoto would have been understood by
the ordinarily skilled artisan to include, with the transmission and reception
operations, an associated image transfer menu, from which various
functions (e.g., communication or memory transmission functions) are
selectable, using function keys 24, and shown on display 22. Id.
Alternatively, Petitioner argues the claimed image transfer menu would
have been obvious as it was well-known in the art and contends a person of
ordinary skill would have combined the menu structure disclosed in Xerox
into the facsimile machine of Matsumoto. See id. at 1011.
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Patent Owner contends Petitioner does not demonstrate the
combination of Matsumoto and Xerox teaches or suggests an image
transfer menu as recited in claims 1 and 12. See Prelim. Resp. 1115.
However, based on our construction of image transfer menu set
forth above in Section II.A.1, the testimony of Mr. Cohen, and the portions
of the references cited by Petitioner, we are persuaded that Petitioner
sufficiently establishes for purposes of this decision that the combined
teachings of Matsumoto and Xerox would have at least suggested to the
ordinarily skilled artisan an image transfer menu for effecting transfer of
the image between the first image transfer device and another image transfer
device, as recited in claim 1 and as similarly recited in claim 12.
We agree with Petitioner that Matsumoto and Xerox both discuss
facsimile machines, with displays, that perform the same functions and that
Xerox discloses menus for these functions. See Pet. 1112; compare
Ex. 1005, 2-15, 2-17 (describing memory send and delayed start
functions), with Ex. 1004, 2:3741 (describing memory transmission and
scheduled/delayed functions). Petitioner concludes that the ordinarily
skilled artisan would have combined the menu structure disclosed in Xerox
with the facsimile machine disclosed in Matsumoto to facilitate transmission
and reception operations, to enhance accuracy of operation, and to enhance
the users quality of experience. Pet. 11. Petitioner further concludes
combining the teachings of Matsumoto and Xerox constitutes combining
known elements according to known methods to yield a predictable result.
Id. at 1112 (citing KSR, 550 U.S. at 417). On the record before us and for
purposes of this decision, we are persuaded that Petitioner has provided
articulated reasoning with some rational underpinning sufficient to support
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the conclusion that it would have been obvious to one of ordinary skill in the
art to combine the teachings of Matsumoto and Xerox. See KSR, 550 U.S. at
418.
Patent Owner further contends Petitioner fails to address the
requirement that the display is exclusively used by the image transfer device
for displaying an image transfer menu. Prelim. Resp. 11. Petitioner,
however, cites Matsumotos display 22 (Pet. 10), described as a liquid
crystal display (Ex. 1004, 6:2932), which Matsumoto calls problematic in
conventional facsimile machines because it is too small to display a lengthy
message (id. at 2:69). Petitioner persuades us that the cited teachings of
Matsumoto at least suggest Matsumotos display 22 is used only by the
facsimile machine (i.e., instead of by the facsimile machine and personal
computer). Thus, we are also persuaded Petitioner sufficiently establishes,
for purposes of this decision, that Matsumoto at least suggests display 22
would have been exclusively used by facsimile machine 1 and would have
displayed the claimed image transfer menu. See Pet. 10 (citing Ex. 1003
44, 45).
c. Claim 1[C]: a computer removably
connected, to the first image transfer
device
With respect to claim 1[C], Petitioner cites Matsumotos facsimile
machine 1 as being connectable to personal computer 2 via cable 4. Pet. 12
(citing Ex. 1004, 4:58, Fig. 1). We are persuaded Petitioner sufficiently
establishes for purposes of this decision that Matsumoto teaches the
limitation recited in claim 1[C].

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d. Claim 1[D]: wherein when the first
image transfer device is not connected to
the computer the first image transfer
device has a first type of the image
transfer menu available for display on the
display of the device
With respect to claim 1[D], Petitioner cites Matsumotos basic control
program stored in ROM 13 of facsimile machine 1 and asserts that [o]ne of
ordinary skill in the art would understand that the facsimile machine 1 can
carry out basic transmission operations without being connected to a
computer. Id. (citing Ex. 1003 48). For the purpose of determining
whether Petitioner sufficiently establishes Matsumoto teaches or suggests
that the facsimile machine operates in standalone mode, we credit the
testimony of Mr. Cohen that a typical user would likely have used their
FAX machine, like the one in Matsumoto, for basic functions/features in
standalone mode. Id.; compare Section II.F.4.d, with Section II.D.2.a supra
(determining the same testimony unpersuasive as failing to show Matsumoto
necessarily discloses the facsimile machine operates in standalone mode as
would be required to establish an inherent disclosure in an anticipating
reference).
Furthermore, as discussed above with respect to claim 1[B], we are
persuaded the combination of Matsumoto and Xerox at least suggests an
image transfer menu for carrying out functions of the facsimile machine,
which include, for example, basic transmission and reception operations.
See id. at 1012.
Patent Owner characterizes Petitioners argument as one that
equate[s] ROM [13] on a fax machine [1] to carrying out operations
required in claim. Prelim. Resp. 14. We disagree with Patent Owners
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characterization. Instead, we understand Petitioners argument to consider
Matsumotos basic control program, which is stored in ROM 13, as enabling
facsimile machine 1 to carry out basic transmission and reception operations,
independently of a computer. See Pet. 12.
e. Claim 1[E]: wherein when the first
image transfer device is connected to the
computer the transfer device has a second
type of the image transfer menu available
for display on the display of the device
wherein a first portion of the second type
of the image transfer menu is stored in the
computer
With respect to claim 1[E], Petitioner contends Matsumoto teaches
that the facsimile machine 1 can use the expanded memory of the
computer 2 in order to store application software, so as to extend its
functionality. Id. at 1213. Petitioner argues [o]ne of ordinary skill in the
art would understand that the menu would be part of the overall software
application. Id. at 14 (internal quotations omitted). We credit the
testimony of Mr. Cohen that various control programs may be stored in
either the facsimile machine 1 or the computer 2, and when stored in the
computer, they enable[] said facsimile machine to achieve at least one
additional function. Ex. 1003 49 (citing Ex. 1004, 10:5911:3). Based
on Petitioners arguments and the testimony of Mr. Cohen, we are persuaded
Petitioner sufficiently establishes for purposes of this decision that the
combination of Matsumoto and Xerox at least suggests the limitation recited
in claim 1[E].
On this record and for purposes of this decision, we are persuaded
Petitioner demonstrates a reasonable likelihood of prevailing in showing the
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combination of Matsumoto and Xerox teaches or suggests the limitations
recited in claim 1 and the similar limitations of claim 12.
6. Analysis of Independent Claim 14
Petitioner relies on substantially the same portions of Matsumoto and
Xerox cited with respect to claim 1 as teaching or suggesting the limitations
of claim 14, which we determine are persuasive for substantially similar
reasons. See Pet. 2527. We address claim 14[E] and claim 14[F]
individually.
a. Claim 14[E]: wherein the display
displays a second one of the menus when
the computer is connected to the
apparatus, the second menu comprising at
least one feature of the first one of the
menus and extended features for
operating the apparatus in comparison to
the first menu
As discussed above with respect to claim 1[B] and claim 1[D], we are
persuaded the combination of Matsumoto and Xerox at least suggests an
image transfer menu for carrying out functions of the facsimile machine,
which include, for example, basic transmission and reception operations.
See Pet. 1012.
With respect to claim 14[E], Petitioner cites the same portion of
Matsumoto cited with respect to claim 1[E], which discloses an application
software and control program that extend the functionality of the facsimile
machine. Id. at 26; see id. at 1213. Petitioner argues control programs
when stored in personal computer 2 enable[] said facsimile machine to
achieve at least one additional function. Id. at 13 (citing Ex. 1004, 10:59
11:3; Ex. 1003 49) (emphasis added). Exemplary functions executed by
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the control programs include an image capturing function, a printing
function, a communication function, a multicopying function, an autoanswer function, a memory transmission function, [and] a scheduled/delayed
function. Id. Petitioner argues it would have been obvious to incorporate
the menus described in Xerox, e.g., menus associated with multi-copying
and delayed transmission, into Matsumotos facsimile machine. Id. at 14.
Patent Owner argues Petitioner fails to identify different menus
being displayed on the display including features for operating the transfer
apparatus as required by claim 14. Prelim. Resp. 25. We disagree. As
discussed above, Petitioner explains how Xerox teaches a different menu for
some of the very same functions described in Matsumoto. See Pet. 14
(citing Ex. 1006, 2-17, 5-1, 8-8); see id. at 11 (citing Ex. 1006, 2-15).
Accordingly, on this record and for the purposes of this decision, we are
persuaded the combination of Matsumoto and Xerox at least suggests a first
menu for the basic transmission and reception operations and a second menu
for the additional function.
In view of the above, we are persuaded the cited teachings of
Matsumoto and Xerox at least suggest the limitation recited in claim 14[E].
b. Claim 14[F]: wherein when the
computer is connected to the apparatus
the controller receives instructions from
the computer that program the controller
to load the second one of the menus
With respect to claim 14[F], according to Petitioner, in Matsumoto,
when the facsimile machine 1 is connected to the computer 2, [t]he
facsimile machine 1 is operated to execute a particular function in
accordance with a corresponding control program [software that sends
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instructions from the computer received by the controller/CPU 10] stored
in the hard disk 39 of the personal computer 2. Id. at 27 (citing Ex. 1004,
7:36).
We agree with Petitioner that Matsumoto teaches a control program
that provides facsimile machine 1 with instructions to execute the particular
function. Ex. 1004, 7:310. As discussed above with respect to claim
14[E], Petitioner persuades us the combination of Matsumotos control
programs enabling at least one additional function and Xeroxs menus
suggests the claimed second menu. In view of the above, we are satisfied
Petitioner sufficiently demonstrates that the combination of Matsumoto and
Xerox at least suggests the limitation recited in claim 14[F].
On this record and for purposes of this decision, we are persuaded
Petitioner demonstrates a reasonable likelihood of prevailing in showing the
combination of Matsumoto and Xerox teaches or suggests the limitations
recited in claim 14[A] through 14[F].
7. Analysis of Independent Claims 21 and 25
Petitioner relies on substantially the same portions of Matsumoto and
Xerox cited with respect to claims 1, 4, and 5 to teach or suggest the
limitations of claim 21. Pet. 2930. We determine that Petitioners
arguments presented with respect to claim 1 are persuasive also with respect
to claim 21[A], claim 21[B], and claim 21[C] for substantially similar
reasons. We address claim 21[D] individually below.

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a. Claim 21[D]: with the computer,
enabling the device to display a second
command menu when the computer is
connected to the device, the second
command menu representing a second set
of the operating features of the device,
wherein the second set of operating
features has at least one feature of the first
set of operating features and expanded
operating features in comparison to the
first set of operating features of the
device, and wherein a portion of the
second command menu is stored on the
computer
With respect to claim 21[D], Petitioner cites the analysis of claim 4,
which recites the computer has software for enabling the processor of the
device to display the second type of menu on the display of the device when
the computer is connected to the first image transfer device. Pet. 31. In
particular, Petitioner cites Matsumotos application software stored in hard
disk 39 of personal computer 2 and facsimile machine 1 that executes a
particular function under the control of a corresponding control program
stored in hard disk 39 of personal computer 2. Id. at 18. Furthermore, as
discussed above with respect to claim 1, Petitioner persuades us that
Matsumoto and Xerox at least suggest a second type of the image transfer
menu. Accordingly, we are persuaded Petitioner sufficiently demonstrates
that the combined teachings of Matsumoto and Xerox at least suggest with
the computer, enabling the device to display a second command menu when
the computer is connected to the device, as required by claim 21[D].
Also with respect to claim 21[D], Petitioner cites the analysis of claim
5, which recites wherein the second type of the image transfer menu

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includes expanded features for operating the image transfer device in
comparison to features of the first type of the image transfer menu. Id. at
31. According to Petitioner, Matsumoto proposes a solution where various
features of the facsimile machine are executed by control programs stored in
the hard disk 39 of an attached computer 2. Id. at 18. Petitioner contends
that Matsumoto discloses enabl[ing] the facsimile machine to achieve at
least one additional function. Id. at 19. We credit the testimony of Mr.
Cohen that the base features (e.g., the features related to the transmission
operation) would remain with the fax machine and claim 1 of Matsumoto
(10:59 to 11:3) expressly teaches that the application software stored in the
computer enable[] said facsimile machine to achieve at least one additional
function. Ex. 1003 60. For these reasons, Petitioner sufficiently
demonstrates that the combined teachings of Matsumoto and Xerox at least
suggest the second command menu representing a second set of the
operating features of the device, wherein the second set of operating features
has at least one feature of the first set of operating features and expanded
operating features in comparison to the first set of operating features of the
device, as recited in claim 21[D].
Lastly, with respect to claim 21[D], Petitioner cites the analysis of
claim 1[E], which recites, in relevant part, wherein a first portion of the
second type of the image transfer menu is stored in the computer. Pet. 30
31. We are persuaded Matsumoto at least suggests a portion of the second
command menu is stored on the computer, as recited in claim 21[D]
because, as we discussed above with respect to claim 1, we are persuaded by
Petitioners arguments and the testimony of Mr. Cohen that various control
programs may be stored in either the facsimile machine 1 or the computer 2,
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and when stored in the computer, they enable[] said facsimile machine to
achieve at least one additional function. Ex. 1003 49 (citing Ex. 1004,
10:5911:3).
On this record and for purposes of this decision, we are satisfied
Petitioner demonstrates a reasonable likelihood of prevailing in showing that
the combination of Matsumoto and Xerox teaches or suggests the limitations
recited in claim 21[A] through 21[D] and the similar limitations of claim 25.
8. Summary
On this record and for purposes of this decision, we are persuaded that
Petitioner demonstrates a reasonable likelihood it would prevail in showing
that claims 1, 12, 14, 21, and 25 are unpatentable under 35 U.S.C. 103 as
obvious over Matsumoto and Xerox. See n.1 supra. We also have reviewed
Petitioners explanations and supporting evidence regarding dependent
claims 211, 13, 1518, 2225, and 26 and determine that they are
persuasive. Pet. 1525, 2729, 3134. Ex. 1003 5272, 74, 75, 8390,
96101, 103, 104. On this record and for the purposes of this decision, we
are persuaded that Petitioner has demonstrated a reasonable likelihood that it
would prevail in showing that claims 211, 13, 1518, 2225, and 26 would
are unpatentable over the combination of Matsumoto, Xerox, Fite, and
Ebner. See n.1 supra.
F. Alleged Obviousness over Fite in view of Xerox, Ebner, and Motoyama
Petitioner contends claims 118 and 2126 of the 633 patent are
unpatentable under 35 U.S.C. 103(a) over Fite, Xerox, Ebner, and

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Motoyama. 2 Pet. 3455. Patent Owner disputes Petitioners contention.
Prelim. Resp. 2945. For the reasons that follow, we determine Petitioner
has not demonstrated a reasonable likelihood of prevailing as to this ground.
1. Overview of Fite
See Section II.E.3.
2. Overview of Xerox
See Section II.E.2.
3. Overivew of Ebner
See Section II.E.4.
4. Overview of Motoyama
Motoyama teaches a multi-function machine that merges images data
from one or more sources and routes the merged image data to user
selectable destinations, including a printer, a host computer, or a facsimile
device. Ex. 1008, Abstract. Machine 10 includes scanner interface 68 that
obtains scanned digital images. Id. at 3:4748, Fig. 3. Machine 10 also
includes Arithmetic Logic Unit (ALU) 77 that merges data from the
scanner interface 68 with data from other sources on the fly, as the scan
data is being sent to the printer interface 66. Id. at 3:5558.
A merge and route operation begins with a merge request, which is
initiated via either host computer 80 or LCD operation panel 36 of machine

Petitioner relies on Fite and Xerox for challenging each of claims 118 and
2126 of the 633 patent. See generally Pet. 3455. Petitioner only relies on
Ebner for challenging dependent claims 8 and 24 (see id. at 4344, 5354)
and Motoyama for challenging dependent claim 10 (see id. at 45).
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10. Id. at 4:3639. A first prompt, provided on LCD operation panel 36 or
monitor 82 of host computer 80, obtains a routing destination for merged
image data. Id. at 4:3943. A second prompt, again provided on either LCD
operation panel 36 or monitor 82 of host computer 80, reads input from host
computer 80, scanned image data, or stored facsimile image data. Id. at
4:4752.
One of the images to be merged may be a registered image. Id. at
6:1620. Figure 8 of Motoyama, reproduced below, illustrates options
displayed by a registered image selection menu.

Figure 8 of Motoyama illustrates a registered image selection menu.

Motoyama teaches that selecting a registered image is analogous to the
selection of any other image to be merged. Id. at 6:6566.
5. Analysis of Independent Claims 1 and 12
a. Claim 1[E]: wherein when the first
image transfer device is connected to the
computer the transfer device has a second
type of the image transfer menu available
for display on the display of the device
wherein a first portion of the second type
of the image transfer menu is stored in the
computer
According to Petitioner, Fite teaches that both standard and enhanced
protocol modules are programs executed in the fax machine. Pet. 38
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(citing Ex. 1005, 5:13) (internal quotations omitted). Petitioner contends
that capabilities of the enhanced protocol module include binary file
transfer, encryption, decryption, routing messages, processing color images,
etc. Id. (citing Ex. 1005, 5:3941) (internal quotations omitted). Petitioner
asserts that Fite teaches, [i]f the PC is available, the PC capability module
sends its capabilities to the fax machine 12 . . . and the enhanced protocol
is used. Id. Petitioner contends that sending the PC capabilities teaches
that a second type of the image transfer menu is stored in the computer, as
recited in claim 1. Id.
According to Petitioner, one of ordinary skill in the art would
understand that, to carry out the functions provided for by the standard and
enhanced protocol modules, a menu would need to be displayed on the
display of the fax machine. Id. (citing Ex. 1003 114). Mr. Cohens
testimony expresses that, in his experience, without a display/menu that
allows the user to select a particular function associated with the enhanced
capabilities of the PC 10, it would be very difficult (or even impossible) to
access or execute those functions. Ex. 1003 114.
Although Fite teaches that [t]he standard and enhanced protocol
modules are programs executed in the fax machine, Petitioner does not
demonstrate that Fite teaches or suggests that enhanced protocol module 26
controls the fax machine to execute the enhanced capabilities such that a
corresponding menu displayed on the fax machine would be necessary or
even useful. See, e.g., Ex. 1005, 5:12. Neither the Petition nor Mr.
Cohens testimony explain how using the resources of Fites PC, for
example, to send or receive messages, teaches or suggests that the program
executing on the fax machine controls the fax machine to execute enhanced
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capabilities including binary file transfer, encryption, decryption, routing
messages, processing color images, etc. as taught by Fite. Id. at 4:1821.
Fite describes the capabilities of the PC as referring to providing
access to the hard disk and all data stored therein, improved resolution of
images, scanning and printing using the PC, remote administration of office
machines, etc. Id. at 4:1519 (emphasis added). Fite further describes how
[t]he PC capabilities module 42 on the PC 10 then sends a list of
information identifying the capabilities to the PC capabilities module 70 on
the fax machine 12, which loads this information into the capabilities data
store 72. Id. at 7:2833. Petitioner does not persuasively explain why
Fites fax machine would display a second type of the image transfer
menu, an image transfer menu, or any menu at all in conjunction with
executing these PC capabilities, particularly because Petitioner does not
present sufficient evidence or argument that would persuade us the fax
machine actually executes any of the PC capabilities, or that, at the fax
machine, a user could initiate execution of the PC capabilities.
As an alternative to the first interpretation discussed above, Petitioner
argues it would have been obvious to incorporate the teachings of Xerox in
Fite, and in particular, the menus for capabilities described in Xerox (e.g.,
secure send and routing messages to Xerox mailboxes) that are similar
to capabilities of Fites fax machine. Pet. 39 (citing Ex. 1006, 8-30, 11-1
11-26; Ex. 1003 109). Petitioner further asserts Xerox describes enhanced
features, e.g., Send from PC, Receive to PC, and Scan, that would utilize
some sort of PC software utility, i.e. transfer menu stored on the PC. Id.
(citing Ex. 1006, 17-2; Ex. 1003 115).

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Even assuming, without deciding, for the purposes of this argument,
Xerox could be considered to teach or suggest an image transfer menu,
Petitioner does not present sufficient evidence to persuade us that the Send
from PC, Receive to PC, and Scan, features, which Petitioner characterizes
arbitrarily as enhanced, would utilize an image transfer menu that is both
available for display on the display of a fax machine and stored on the PC.
See id. Moreover, neither the Petition nor the Declaration explain how a PC
software utility is equivalent to a transfer menu or even a menu. See id.
Mr. Cohens testimony makes a conclusory assertion that this feature is
taught or suggested by Xerox, but does not disclose the underlying facts or
data forming the basis of his opinion that a person of ordinary skill in the art
would have found the claimed subject matter obvious in spite of the missing
limitation. See Ex. 1003 115; see also 37 C.F.R. 42.65(a) (Expert
testimony that does not disclose the underlying facts or data on which the
opinion is based is entitled to little or no weight.)
For the foregoing reasons, Petitioner does not persuade us the
combination of Fite and Xerox teaches or suggests the limitation recited in
claim 1[E]. Petitioner refers to the analysis of claim 1 to teach the
limitations recited in claim 12. See Pet. 46. Thus, Petitioner does not
persuade us the similar limitation of claim 12 is taught or suggested by the
combination of Fite and Xerox for substantially similar reasons.
6. Analysis of Independent Claim 14
Claim 14[E]: the display displays a second one of
the menus when the computer is connected to the
apparatus, the second menu comprising at least one
feature of the first one of the menus and extended

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features for operating the apparatus in comparison
to the first menu
Petitioner refers to the analysis of claim 1[E] and claim 4 to explain
how the combination of Fite and Xerox teaches or suggests the limitation
recited in claim 14[E]. Id. at 48. The analysis of claim 4 does not discuss
any overlap between features in the first and second menus. Id. at 4041.
For this reason, and for the reasons discussed above with respect to claim
1[E], Petitioner fails to establish that the combination of Fite and Xerox
teaches or suggests the limitation recited in claim 14[E].
7. Analysis of Independent Claims 21 and 25
Claim 21[D]: with the computer, enabling the
device to display a second command menu when the
computer is connected to the device, the second
command menu representing a second set of the
operating features of the device, wherein the second
set of operating features has at least one feature of
the first set of operating features and expanded
operating features in comparison to the first set of
operating features of the device, and wherein a
portion of the second command menu is stored on
the computer
Petitioner relies on the analysis of claim 1[E], as well as the analysis
of claims 4 and 5 and asserts that the combination of Fite and Xerox teaches
or suggests the limitation recited in claim 21[D]. Id. at 52. For the reasons
discussed above with respect to claim 1[E], Petitioner fails to establish that
the combination of Fite and Xerox teaches or suggests with the computer,
enabling the device to display a second command menu when the computer
is connected to the device . . . and wherein a portion of the second command
menu is stored on the computer, as required by claim 21[D].
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Petitioner refers to the analysis of claim 21 and claim 1[E] to teach the
limitations recited claim 25. Id. at 54. Thus, Petitioner also does not
establish that the similar limitation of claim 25 is taught or suggested by the
combination of Fite and Xerox for substantially similar reasons.
8. Summary
We determine that Petitioner does not establish that: the limitation
recited in claim 1[E] and the similar limitation of claim 12; the limitation
recited in claim 14[E]; and the limitation recited in claim 21[D] and the
similar limitation of claim 25 are taught or suggested by the combination of
Fite and Xerox. See n.2 supra. Accordingly, Petitioner does not establish
the limitations of claims 211, 13, 1518, 2224, and 26, which depend
respectively from claims 1, 12, 14, 21, and 25, are taught or suggested by the
combination of Fite, Xerox, Ebner, and Motoyama. Id.
On this record and for purposes of this decision, Petitioner fails to
establish a reasonable likelihood it would prevail in showing that claims 1
18 and 2126 are unpatentable under 35 U.S.C. 103 as obvious over Fite,
Xerox, Ebner, and Motoyama.
G. Alleged Anticipation based on Motoyama
Petitioner contends that claims 19 and 20 of the 633 patent are
anticipated under 35 U.S.C. 102(b) by Motoyama. Pet. 5557. Patent
Owner disputes Petitioners contention. Prelim. Resp. 4548. For the
reasons that follow, we determine that Petitioner has not demonstrated a
reasonable likelihood of prevailing as to this ground.
1. Overview of Motoyama
See Section II.F.4.
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2. Analysis of Independent Claim 19
Claim 19[D]: with a processor of the
image transfer device, automatically
merging the electronic data with the
image read by the scanner
With respect to claim 19[D], Petitioner cites Motoyamas teaching of
an Arithmetic Logic Unit (ALU) 77 of multi-function machine 10 as
teaching the claimed processor that is used to merge data from the
scanner interface 68 with data from other sources on the fly, as the scan
data is being sent to the printer interface 66. Pet. 57. Petitioner construes
the term automatically to mean that an action takes place at the image
transfer device without user interaction with the computer. Id. at 8.
We are not persuaded that Motoyamas disclosure of the operation
taking place on the fly demonstrates that the merge and route operation
takes place necessarily without user interaction at a computer. Motoyama
describes how a merge request may be initiated from the Merge button on
the operation panel 36 or from host computer 80 and a prompt may be
provided on LCD 36, or on the monitor 82 of host computer 80. Ex. 1008,
4:3642 (emphases added). This is inconsistent with Petitioners position
that Motoyama shows the merging and printing operations taking place
without user interaction, for example, with host computer 80. See Pet. 8, 57.
For the foregoing reasons, we are not persuaded that Petitioner
demonstrates Motoyama discloses, either expressly or inherently,
automatically merging as required by claim 19[D]. Accordingly,
Petitioner does not establish that the limitation recited in claim 20, which
depends from claim 19, is disclosed, either expressly or inherently, in
Motoyama.
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3. Summary
On this record and for purposes of this decision, Petitioner fails to
establish a reasonable likelihood it would prevail in showing that claims 19
and 20 are anticipated under 35 U.S.C. 102 by Motoyama.
H. Alleged Anticipation based on Shiimori
Petitioner contends claims 19 and 20 of the 633 patent are anticipated
under 35 U.S.C. 102(e) by Shiimori. Pet. 5860. Patent Owner disputes
Petitioners contention. Prelim. Resp. 4851. For the reasons that follow,
we determine that Petitioner has not demonstrated a reasonable likelihood of
prevailing as to this ground.
1. Overview of Shiimori
Shiimori discloses generating editing image data and thumbnail image
data from printing image data. Ex. 1009, 14:5561. Initially, image data is
read by reflection type scanner 16 or film scanner 17, each of which is
connected to image input/output work station 15. Id. at 14:26. Image data
read by the scanners is saved as printing image data in image saving disk
array 11 under control of image server 10. Id. at 14:69. Figure 1,
reproduced below, illustrates a first embodiment of Shiimoris image
communication system.

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Figure 1 of Shiimori (Ex. 1009) illustrates the image communication system.

In a third embodiment of Shiimoris image communication system,
Shiimori discloses transmitting editing template image data from image
server 30 to client computer 40 responsive to a request. Id. at 26:6427:3;
see id. at Fig. 15. The editing template image data and a user image stored
in client computer 40 are synthesized in the client computer 40, so that a
composite image is generated. Id. at 25:5164.

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2. Analysis of Independent Claim 19 and Dependent Claim 20
a. Claim 19[A]:providing an image
transfer device having a scanner for
reading an image on the first medium
b. Claim 19[B]: reading the image on the
first medium with the scanner
c. Claim 19[D]: with a processor of the
image transfer device, automatically
merging the electronic data with the
image read by the scanner
Petitioner cites Shiimoris client computer 40 as teaching the claimed
image transfer device and contends the client computer stores image data
that can be obtained using a scanner. Pet. 58. The relevant portion of
Shiimori cited by Petitioner describes obtaining image data by reflection
type scanner 16 or film scanner 17, each of which is connected to image
input/output workstation 15, not client computer 40. See Ex. 1009, 14:29,
Fig. 1.
The testimony of Mr. Cohen concedes the use of scanners 16 and 17
to obtain image data is described in connection with the first embodiment of
Shiimori, but that it would be trivial (and certainly within the skill of one
of ordinary skill in the art) to use the same technique for the purpose of the
obtaining image data in the third embodiment, in which the computer 40
is attached to both a flatbed scanner 91 and a film scanner 92. Ex. 1003
179.
Irrespective of whether it would have been within the level of skill of
one of ordinary skill in the art, or even trivial, it is not permissible to
combine embodiments to show anticipation by a reference. See Net

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MoneyIN v. Verisign, 545 F.3d 1359, 1370 (Fed. Cir. 2008) (Because the
hallmark of anticipation is prior invention, the prior art referencein order
to anticipate under 35 U.S.C. 102must not only disclose all elements of
the claim within the four corners of the document, but must also disclose
those elements arranged as in the claim.). It is not enough that the prior
art reference . . . includes multiple, distinct teachings that the artisan might
somehow combine to achieve the claimed invention. Id. at 1371 (citing In
re Arkley, 455 F.2d 586, 587 (C.C.P.A. 1972)).
Petitioner impermissibly relies on the combined disclosures of
Shiimoris first and third embodiments to demonstrate that Shiimori
discloses image data stored in client computer 40 is obtained via an attached
scanner. See Pet. 58. For the foregoing reasons, we are not persuaded
Petitioner demonstrates Shiimori discloses, either expressly or inherently,
reading the image on the first medium with the scanner, as required by
claim 19[B] and merging the electronic data with the image read by the
scanner, as required by claim 19[D].
d. Claim 20: wherein the electronic data
uploaded from the computer to the image
transfer device stays with the image
transfer device after the computer is
disconnected from the image transfer
device
Petitioner does not cite a portion of Shiimori that expressly discloses
disconnecting client computer 40 from image server 30. See Pet. 60. In lieu
of an express disclosure in Shiimori, Mr. Cohen testifies all of the data sent
from the image server 30 to the client computer 40 is stored in the hard drive
94 of the client computer and that [o]nce stored in the HD drive 94 of the

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computer 40, it is my opinion based on my experience in the art, that the
data would be available for later use even if the computer 40 was
disconnected from the image server 30. Ex. 1003 184. The underlying
fact upon which Mr. Cohen bases his testimony is column 2, line 53 through
column 3, line 5 of Shiimori, which states that image data which have been
received are temporarily written into the hard disk by the HD drive 94 (step
165). See id. (emphasis added). Particularly in light of this teaching,
Petitioner fails to demonstrate that image data stored in the client computer
would necessarily remain available even if the client computer was
disconnected from the image server. For this reason, Petitioner does not
persuade us Shiimori discloses, either expressly or inherently, the limitation
recited in claim 20.
3. Summary
On this record and for purposes of this decision, Petitioner fails to
establish a reasonable likelihood it would prevail in showing that claims 19
and 20 are anticipated under 35 U.S.C. 102 by Shiimori.

III. CONCLUSION
For the foregoing reasons, we determine that Petitioner has
demonstrated there is a reasonable likelihood it would prevail in establishing
the unpatentability of claims 118 and 2126 of the 633 patent. At this
stage of the proceeding, the Board has not made a final determination as to
the patentability of any challenged claim.

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IV.

ORDER

In consideration of the foregoing, it is hereby:

ORDERED that, pursuant to 35 U.S.C. 314(a), an inter partes
review is hereby instituted as to claims 118 and 2126 of the 633 patent on
the following asserted ground:
Claims 118 and 2126 under 35 U.S.C. 103(a) as
unpatentable over Matsumoto, Xerox, Fite, and Ebner;
FURTHER ORDERED that the trial is limited to the grounds
identified above, and no other grounds set forth in the Petition are
authorized; and
FURTHER ORDERED that pursuant to 35 U.S.C. 314(c) and
37 C.F.R. 42.4, inter partes review of the 633 patent shall commence on
the entry date of this Order, and notice is hereby given of the institution of a
trial.

FOR PETITIONER:
Artem N. Sokolov
McDermott Will & Emery
Email: asokolov@mwe.com
Jonathan Stroud
Unified Patents Inc.
Email: jonathan@unifiedpatents.com
FOR PATENT OWNER:
Gary Sorden
Kirby B. Drake
Klemchuk LLP
Email: gary.sorden@klemchuk.com
Email: kirby.drake@klemchuk.com

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