[00:00:07] Speaker 04: Okay, the next argued case is number 16, 1243, MPHJ Technology Investments Against Rico Americas Corporation. [00:00:24] Speaker 04: Mr. Ganti. [00:00:30] Speaker 00: May it please the court. [00:00:33] Speaker 00: The appellants have filed an appeal to challenge the findings in a board final written decision. [00:00:41] Speaker 00: In the briefs, the appellants identified a number of flaws. [00:00:46] Speaker 00: Here I'd like to discuss two of those flaws that are in the final written decision. [00:00:51] Speaker 00: Those are the go button requirement of claim one and the interfacing requirement of claim four. [00:00:57] Speaker 00: With respect to the go button requirement of claim one, [00:01:00] Speaker 00: Claim 1 requires a Go button, and there's two components to this Go button. [00:01:05] Speaker 00: The first is a scanner that's capable of rendering an image in response to a selection of a Go button. [00:01:13] Speaker 00: The second component is that in response to the same selection of that Go button, that image is transmitted to one of a plurality of external destinations. [00:01:24] Speaker 00: The claims further require a system that's capable of having an email application software as a destination. [00:01:34] Speaker 00: So the go button limitation requires a single selection where an image is rendered by a scanner and then transmitted to an external destination where one of those external destinations is email application software. [00:01:49] Speaker 00: That particular limitation is not found in the prior art. [00:01:54] Speaker 00: Which one? [00:01:55] Speaker 00: The go button requirement of scanning or a scanner that renders an image and then in response to that same selection [00:02:04] Speaker 00: that image being transmitted to an external destination that's email application software. [00:02:09] Speaker 02: OK. [00:02:09] Speaker 02: So you feel that you have to establish both of those facts. [00:02:13] Speaker 02: One, that it is automatic or a single step. [00:02:17] Speaker 02: And second, that it's email. [00:02:19] Speaker 00: That's right. [00:02:20] Speaker 00: And we know that because the claims do require a protocol using a particular protocol when the destination is email application software. [00:02:28] Speaker 03: But when is conditional? [00:02:30] Speaker 00: When is conditional. [00:02:32] Speaker 00: But in a- It's not required. [00:02:35] Speaker 00: Well, we disagree with that. [00:02:36] Speaker 00: We believe that a conditional requirement must be found in the prior art. [00:02:40] Speaker 00: The prior art has to teach that condition. [00:02:43] Speaker 00: The meeting of the condition is something that's necessary in the prior art, but the prior art can, the condition does not have to be triggered in the prior art, but the prior art system has to be able to handle that condition. [00:02:56] Speaker 00: And that condition is using a particular set of protocols when that destination is email application software. [00:03:03] Speaker 00: So in order to invalidate the patent, that particular condition has to be shown in the prior art. [00:03:08] Speaker 00: I'll note that in the underlying case, the email application software was something that was given patentable weight by the board, by the appellees, and by the appellant as well. [00:03:19] Speaker 00: So it's only now that we hear this conditional requirement argument on appeal. [00:03:25] Speaker 00: I'd also like to distinguish it from an optional claim limitation as opposed to a conditional claim limitation. [00:03:32] Speaker 00: An optional claim limitation is something that is not given patentable weight, because it's merely just an option. [00:03:37] Speaker 00: But a conditional limitation should be given patentable weight. [00:03:41] Speaker 00: The appellant cites to the Liberty National Life Insurance case that held that a term that says even if, which is a conditional term, is given patentable weight in the context of infringement. [00:03:56] Speaker 00: And there an infringing device was found, or a device accused for infringement, [00:04:01] Speaker 00: was not found to be infringing because it did not embody that conditional requirement. [00:04:07] Speaker 00: So now the prior art, there are two pieces of prior art that were primary references. [00:04:12] Speaker 00: One is X and S, the other is Harkins. [00:04:15] Speaker 00: And the appellant doesn't disagree with the factual findings of this prior art. [00:04:19] Speaker 00: In X and S, there is a scanner called the GIS 150. [00:04:24] Speaker 00: It's a scanner from the 1980s that was produced by Xerox. [00:04:28] Speaker 00: And this scanner is capable of only transmitting [00:04:31] Speaker 00: to a file server and a print server, and nothing else. [00:04:35] Speaker 00: And that's clear in the record, and that's something that the board relied upon. [00:04:39] Speaker 00: So this particular scanner that was used to invalidate the patent cannot transmit to email application software. [00:04:49] Speaker 00: The XNS reference also discloses the ability to distribute documents over email, but that's a completely separate transaction that's not tied to the scanner. [00:05:00] Speaker 00: So in order to move a document from a scanner to the email software application, a user must scan it, manually manipulate it, move it around, and eventually get it to that email application software. [00:05:14] Speaker 00: And that's a multi-step process. [00:05:16] Speaker 02: So you're saying that XNS ultimately teaches sending something over email, but not teaches it as a destination in response to the Go button. [00:05:26] Speaker 00: That's right. [00:05:27] Speaker 00: So the claims are limited to a single go button selection. [00:05:30] Speaker 00: And what the prior art teaches is a multi-step process where scanning is done on one end, and then later on there's document distribution using email application software on the other end. [00:05:41] Speaker 00: But there's no link between the two. [00:05:44] Speaker 00: And sure, a user can manually manipulate the system to scan a document and move it to the email application software. [00:05:51] Speaker 00: but that requires manual intervention and that's exactly the problem that the patentee was trying to avoid. [00:05:58] Speaker 00: The patentee came up with a virtual copier interface to link different destinations and different input sources together so that all the user has to do is hit a single go button and it can copy directly from a scanner type device to email application software. [00:06:17] Speaker 00: That's XNS. [00:06:18] Speaker 00: Harkins is similar to XNS in that respect. [00:06:21] Speaker 00: Harkins describes something called a digital suitcase that holds files. [00:06:26] Speaker 00: It's a repository for files. [00:06:28] Speaker 00: And users can drag and drop files out of that digital suitcase into any channel that they want. [00:06:34] Speaker 00: And one of those channels is an email application software. [00:06:38] Speaker 00: But Harkins doesn't talk about how the documents get into that digital briefcase. [00:06:43] Speaker 00: And one can presume that a scanner might have scanned a document and a user might have dragged and dropped it into the briefcase. [00:06:50] Speaker 00: But again, this is manual intervention of dragging and dropping, of moving documents around. [00:06:55] Speaker 00: This is not the single selection of a go button that's being claimed. [00:06:58] Speaker 02: Well, couldn't the dragging and dropping, if that then is automatic from that point forward, couldn't that effectively be a go button? [00:07:08] Speaker 00: We disagree with that. [00:07:09] Speaker 00: And that is a position the board took. [00:07:11] Speaker 00: The reason we disagree with that is that the go button selection implicates the scanner peripheral. [00:07:19] Speaker 00: In response to a selection of the go button, the scanner renders the image. [00:07:24] Speaker 00: So if you're just dragging and dropping from a file repository to an email application, that has nothing to do with a scanner. [00:07:31] Speaker 00: A scanner or any other multifunctional peripheral is not implicated by that particular action. [00:07:38] Speaker 00: So for that reason, Harkins doesn't anticipate the single go button selection. [00:07:43] Speaker 00: There's also another obviousness ground that was alleged. [00:07:46] Speaker 00: It was ground three where the APOLI brought in a third reference called Motoyama. [00:07:52] Speaker 00: But Motoyama was brought in for a very small, limited, specific purpose of addressing protocols being stored in memory. [00:08:00] Speaker 00: Motoyama was not used to cure the deficiencies of this anticipation argument with respect to Go button. [00:08:07] Speaker 00: So for those reasons, it's. [00:08:10] Speaker 02: If XNS, though, does show a single step process, you just say it doesn't show a single step process to email. [00:08:18] Speaker 00: That's right. [00:08:19] Speaker 00: It shows a single step process. [00:08:21] Speaker 00: for scanning it to a file server and print server. [00:08:24] Speaker 00: But that's it. [00:08:25] Speaker 00: In order to anticipate, it has to be able to scan it to an email software application. [00:08:30] Speaker 00: And this is evidence that at the time, or prior to the time of invention, commercialized scanners weren't able to do this. [00:08:39] Speaker 00: And that's exactly what the prior art teaches, that a scanner can only send to destination devices that are print servers and file servers. [00:08:49] Speaker 00: Now moving on to the, [00:08:51] Speaker 00: the claim four, which requires interfacing. [00:08:56] Speaker 00: Claim four requires interfacing a scanner to email software application. [00:09:02] Speaker 00: And interfacing is not an abstract concept here. [00:09:05] Speaker 00: It's used in the context of the software arts. [00:09:09] Speaker 00: In the preceding claim element, four C, the claim requires a communicative link between the scanner and the email software application using a protocol. [00:09:20] Speaker 00: So here we're talking about two endpoint devices, one talking to the other. [00:09:25] Speaker 00: There's communication passing between these two endpoints. [00:09:30] Speaker 00: And that's interfacing. [00:09:31] Speaker 00: Interfacing means that there's a shared boundary between these two things. [00:09:35] Speaker 00: What the board did is they construed interfacing to be so broad that it encompasses a manual intervention of dragging and dropping of moving documents around. [00:09:45] Speaker 00: But when you see dragging and dropping and moving documents around, [00:09:49] Speaker 00: in the prior art, that's actually proof that there's no interfacing between the scanner and the email software application. [00:09:59] Speaker 02: Doing away with the manual intervention, as I understand it, your primary argument is that there was a disavowal of manual intervention in the prosecution history, right? [00:10:08] Speaker 00: That's right. [00:10:09] Speaker 02: And it's not absolutely clear from the specification that manual intervention is disallowed, but you rely on the prosecution history to get there. [00:10:17] Speaker 00: Well, not the prosecution history, and I'll clarify that, the provisional application, which is incorporated in reference to the 173's patent. [00:10:26] Speaker 00: It's actually the provisional application, and I'll refer to Appendix 1819, where the inventor himself said that [00:10:35] Speaker 00: The manual drag and drop is a problem in the prior art. [00:10:39] Speaker 00: My solution is an interface to avoid that, to allow copying directly in one single step from a scanner to a destination application. [00:10:48] Speaker 00: That's what the inventor came up with. [00:10:50] Speaker 00: And his characterization of the prior art is similar to what the prior art is of record here, which is this manual drag and drop of moving two things, moving a document from one source to another. [00:11:04] Speaker 02: clearly are standards for just a dollar high. [00:11:08] Speaker 02: And why do you think this language satisfies those standards? [00:11:12] Speaker 00: It's because the inventor himself characterized the prior art. [00:11:15] Speaker 00: He explained what the prior art was. [00:11:18] Speaker 00: He referred to a prior art product, one which is Xerox as well. [00:11:22] Speaker 00: He explained the deficiencies of that prior art, which is the manual intervention. [00:11:26] Speaker 00: And then he said why his invention is different from that. [00:11:30] Speaker 00: And when you lay it out like that, the inventor is free to describe what his innovation is as a public disclosure. [00:11:36] Speaker 00: He's using the prior art to set himself apart from that. [00:11:40] Speaker 00: So it would be improper to read in the prior art that he characterized into the very claims that he's trying to use to describe what his invention is. [00:11:48] Speaker 02: If we agree with you that the board misconstrued the go button, should we remand for the board to consider obviousness or anticipation in light of the proper claim construction, or do you think there's only one clear result? [00:12:03] Speaker 00: There's only one clear result, and that's because the factual findings have already been determined. [00:12:08] Speaker 00: The board has found that XNS and Harkins are a multi-step process. [00:12:13] Speaker 00: There's nothing else to consider. [00:12:16] Speaker 00: If the board is to agree that the Gobind is a single selection that allows scanning and transmitting the document to the destination in one step, based on the facts already determined by the board, the prior art doesn't anticipate that. [00:12:37] Speaker 03: Didn't the board say at page 25, evidence produced shows and patent owner acknowledges that x and s discloses scanning and distribution of documents two steps? [00:12:55] Speaker 00: That's right. [00:12:55] Speaker 00: This is the multi-step process that's part of the prior art. [00:12:59] Speaker 00: So that's known in the prior art. [00:13:01] Speaker 00: But that's not what's being claimed. [00:13:02] Speaker 00: What's being claimed is a single go button selection. [00:13:07] Speaker 00: There is antecedent basis between these two go button selections. [00:13:12] Speaker 00: And the board decided to separate and break those out into two different steps in order to justify its opinion. [00:13:20] Speaker 04: OK. [00:13:20] Speaker 04: Thank you. [00:13:21] Speaker 00: Thank you. [00:13:21] Speaker 04: We'll save you rebuttal time, Mr. Gandhi. [00:13:27] Speaker 04: Mr. Wright. [00:13:37] Speaker 01: Thank you, Your Honor. [00:13:39] Speaker 01: John Wright on behalf of RICO, Xerox, and Lexmark, and may I please the court. [00:13:45] Speaker 01: Neither independent claim requires the single-step scan-to-email embodiment that MPHJ must read into its claims to save the 173 patent. [00:13:58] Speaker 01: Here the patentee chose to claim broadly. [00:14:02] Speaker 01: And to read such a specific embodiment into the claims violates the bedrock principle that it's the claims that define the scope of the invention and the well-settled principle of claim construction that we do not read into broadly drafted claims very specific embodiments from the specification. [00:14:27] Speaker 02: One of the things I didn't really follow from your brief was your argument that whatever happened in the provisional application of what it was ever asserted there is meaningless because it didn't show up in the spec. [00:14:39] Speaker 02: I don't really follow that. [00:14:41] Speaker 02: Prosecution history is prosecution history. [00:14:43] Speaker 01: It is not meaningless for sure. [00:14:46] Speaker 01: It is certainly incorporated by reference. [00:14:50] Speaker 01: But to suggest that the public notice function of the [00:14:57] Speaker 01: of the patent document is met when you select, first of all the call single step scan to email embodiment of the invention is charitable because you don't see that in the provisional application either. [00:15:10] Speaker 01: You don't see email. [00:15:13] Speaker 01: for instance, but to suggest that you can select a very high level statement that the patentee made in one of seven provisional applications and then suggest that, oh, that somehow defines the invention here. [00:15:32] Speaker 01: It should be read into the claims when the claims unambiguously do not require that embodiment, I think, is error. [00:15:40] Speaker 01: I didn't mean to suggest that the provisional is not relevant to construing the claims. [00:15:46] Speaker 02: All right. [00:15:47] Speaker 02: That was the suggestion I took from your brief. [00:15:49] Speaker 02: And it is true that the language is strong in the provisional application that says that it is disclaiming the two-step process or at least claiming something better than a two-step process. [00:16:06] Speaker 01: not with respect to email. [00:16:09] Speaker 01: I think what would benefit the panel here is to walk very carefully through claim one and see what claim one actually requires. [00:16:17] Speaker 01: Because I think when we do that, in view of XNS, we'll see that XNS anticipates. [00:16:23] Speaker 01: When you look at the first place where the Go button appears, first of all, claim one is the system claim. [00:16:28] Speaker 01: There's no step that says scan. [00:16:32] Speaker 01: It just says you need a network addressable scanner [00:16:35] Speaker 01: or digital copier or multifunction peripheral that's capable of rendering at least one of an image, a graphic, or a document in response to a selection of a go button. [00:16:47] Speaker 01: The second place where the go button appears is in the wearing clause. [00:16:51] Speaker 01: And right now I'm on appendix page 130, column 86 of the pack. [00:16:57] Speaker 01: That's where claim one is reproduced. [00:16:59] Speaker 01: When you look at the where in clause where the go button appears the second time, it starts at roughly line 44. [00:17:06] Speaker 01: It says that in response to the selection of said go button, an electronic document management system, that's XNS, integrates at least one of the image, the graphic, or the document so that [00:17:25] Speaker 01: the image, graphic, or document, and this is important, gets seamlessly replicated and transmitted to at least one of said plurality of external destinations. [00:17:36] Speaker 01: And one of those external destinations, if we go to the preamble, is a local file. [00:17:42] Speaker 01: And XNS, and there's no dispute to this, and PHJ concedes it, XNS unambiguously has a scanner, a networked scanner, that in response to a start button, [00:17:53] Speaker 01: scans the document and puts it into a local file, and that is all claim one requires. [00:18:01] Speaker 01: Now, let's look where claim one talks about email, and where I'm looking in the appendix for what XNS does, I think the clearest place perhaps is at appendix 520. [00:18:17] Speaker 01: It says that the digitized image at the graphics input model may be sent to a specified file in a file service for storage or to a print service for printing. [00:18:27] Speaker 01: That is using the go button on the XIS or the GIS scanner and scanning it to a local file. [00:18:34] Speaker 01: And that is all claim one requires. [00:18:36] Speaker 01: Now let's turn to the email limitation. [00:18:39] Speaker 01: All that says is that there is that wherein one of said [00:18:44] Speaker 01: So the plurality of interface protocols is in the processor limitation that's just above it. [00:18:48] Speaker 01: I'm back to the patent at column 86 at line 22. [00:18:54] Speaker 01: There's a processor that's connected to the memory that implements a plurality of interface protocols as a software application for interfacing and communicating with the plurality of external destinations. [00:19:09] Speaker 01: And then the email comes in the next clause. [00:19:11] Speaker 01: It says, where in? [00:19:13] Speaker 01: one of said plurality of interface protocols is employed when one of said external destinations is email application software. [00:19:22] Speaker 01: That's it. [00:19:23] Speaker 01: And XNS has, as a destination, email application software. [00:19:29] Speaker 01: You can take that. [00:19:30] Speaker 02: But it seems like we're skipping a step here. [00:19:34] Speaker 02: So the claim one says that you're [00:19:38] Speaker 02: that it's an external destination that the Go button sends you to. [00:19:45] Speaker 01: One of said plurality of external destinations, which unambiguously is a local file. [00:19:55] Speaker 01: Right in the preamble, it says one or more external destinations. [00:19:59] Speaker 01: I'm at line 11 in column 86. [00:20:02] Speaker 01: One of the plurality of external destinations, including one or more of external devices, [00:20:08] Speaker 01: local files and applications generically. [00:20:13] Speaker 01: So the where in clause, where we see the second occurrence of the go button, all that requires is that the document gets seamlessly replicated and transmitted to at least one of said plurality of destinations, and that is to a local file. [00:20:29] Speaker 01: Unambiguously, XNS has that. [00:20:31] Speaker 01: There's no dispute, and that is all claim one requires. [00:20:35] Speaker 01: Now, when [00:20:37] Speaker 01: destination is email you use an interface protocol that's not linked to you don't need that that's not a requirement of the wearing clause [00:20:55] Speaker 01: So when you look at XNS, XNS has a plurality of interface protocols. [00:21:00] Speaker 01: Those are right at the top of appendix 423. [00:21:03] Speaker 01: You see XNS's software application layer. [00:21:08] Speaker 01: And it has protocols for printing, it has protocols for filing, protocols for mail, protocols for scanning. [00:21:14] Speaker 02: So then you would differentiate though, would you not, whether or not XNS anticipates with respect to claim one and whether it anticipates with respect to claim four. [00:21:24] Speaker 02: Based on this very argument. [00:21:27] Speaker 01: Well, no. [00:21:27] Speaker 01: So claim four doesn't have the gold button. [00:21:31] Speaker 02: There's no gold button. [00:21:32] Speaker 02: But you need to interface. [00:21:34] Speaker 01: Claim four has the limitation interfacing. [00:21:38] Speaker 01: That's right. [00:21:40] Speaker 01: So let's look at, let's shift to claim four. [00:21:45] Speaker 01: There is a go button in dependent claim six. [00:21:49] Speaker 01: It just says that wherein one or more steps occur in response to selection of the single go button. [00:21:55] Speaker 01: So claim four. [00:21:58] Speaker 01: has a number of steps. [00:21:59] Speaker 01: It has a transmitting step. [00:22:01] Speaker 01: It has a rendering step. [00:22:02] Speaker 01: It has an interfacing step, communicatively linking. [00:22:05] Speaker 01: It has a transmitting step. [00:22:07] Speaker 01: And all that's required by the Go button, to the extent that it applies in helping us to interpret claim one and claim four, just requires one or more steps occurring in response to the Go button. [00:22:20] Speaker 01: But if we look at interfacing, and this was perhaps the confusion and the frustration with MPHJ's brief, is they seem to suggest that, oh, if you agree with us on GO-BUT, we win, or if you agree with us on interfacing, we win. [00:22:39] Speaker 01: But they need to win on just about every claim construction to win. [00:22:43] Speaker 01: They never describe the prior art or explain the impact [00:22:47] Speaker 01: of their claim constructions in view of the prior art. [00:22:51] Speaker 01: So turning to claim four. [00:22:53] Speaker 02: Well, if the prior art doesn't show interfacing. [00:22:55] Speaker 02: It absolutely shows interfacing. [00:22:57] Speaker 02: But I'm saying if it doesn't, if I concluded or we concluded that it didn't, then the analysis of claim four, even under your arguments, would be different than the analysis of claim one. [00:23:08] Speaker 01: The analysis is different because Claim4 does require email application software, requires interfacing to email application software. [00:23:19] Speaker 02: Okay, not interfacing to, and this is my big concern here. [00:23:22] Speaker 02: It says interfacing between. [00:23:24] Speaker 02: Okay. [00:23:25] Speaker 02: And you seem to argue that the devices can interface with themselves. [00:23:33] Speaker 01: I think the best way to answer that question is to look at interfacing in the context of the Harkins reference. [00:23:43] Speaker 01: So let's look at Harkins. [00:23:47] Speaker 01: I think the best place to look is at page 18 of our red brief. [00:23:52] Speaker 01: Because there's a version with color for figure one of Harkins. [00:23:58] Speaker 02: Right. [00:23:58] Speaker 02: And as I understand what you're saying, is that the document can both render and transmit. [00:24:03] Speaker 02: The same thing can render and transmit, right? [00:24:07] Speaker 01: Right. [00:24:07] Speaker 02: So if you look. [00:24:08] Speaker 02: So where does that deal with the between language? [00:24:11] Speaker 01: OK. [00:24:12] Speaker 01: I can explain that. [00:24:13] Speaker 01: If we look at figure one of Harkins, which is at appendix 840, or sorry, page 18 in our red brief, [00:24:22] Speaker 01: If you see the yellow interface 40 that is replicated at the scanner, it's sitting at the workstation, it's sitting at the printer, it's sitting at a second workstation. [00:24:34] Speaker 01: All those places in yellow. [00:24:35] Speaker 01: If you look at that interface in Harkins, I think figure 9 is the best place. [00:24:44] Speaker 01: It's at appendix 848 to show what that interface looks like. [00:24:57] Speaker 01: You can stand at the scanner in Harkins, at the interface scanner in Harkins, page 848, appendix page 848. [00:25:11] Speaker 01: You can lay a report and you can hit the scan button, and Harkins has, like XNS, a scan to local file. [00:25:22] Speaker 01: And the report will go into the document suitcase in the upper left corner. [00:25:27] Speaker 01: Then, standing right at the scanner in Harkins, you can take that report and you can slide it into Jane Rose's communication profile, for instance, or any of the communication profiles there. [00:25:39] Speaker 02: But doesn't this have to do with the user interface? [00:25:41] Speaker 02: That's not the same as the interfacing claim language. [00:25:45] Speaker 01: I think it is. [00:25:46] Speaker 01: MPHJ repeatedly points to the provisional application at appendix 820, where they allege that the provisional application expressly defines interface. [00:26:02] Speaker 01: And what that says, and I'm reading from the bottom of 820, this patent should simply protect our interface and its ability to intuitively convey to the user [00:26:13] Speaker 01: the ability to copy without distinguishing between physical and electronic paper. [00:26:18] Speaker 01: That's right below the portion of the provisional application that they point to where it says. [00:26:23] Speaker 02: Yes, but I think they don't they distinguish between user interface and the question of whether the multi-peripheral is interfacing with something else? [00:26:36] Speaker 01: I think that interfacing, as the board construed it, is simply [00:26:44] Speaker 01: And their construction and application of interface has shifted throughout this entire proceeding and it has shifted on appeal. [00:26:56] Speaker 01: Interfacing is making a direct or indirect connection between two elements so they can work with each other to exchange information. [00:27:05] Speaker 01: Now, MPHJ would say so they can directly work with each other or directly exchange information. [00:27:11] Speaker 01: That's their [00:27:13] Speaker 01: claim construction for interfacing that's on, I think on page 10. [00:27:20] Speaker 01: So what Horkins provides and what XNS also provides is an interface so that you can stand at a scanner or you can stand at a workstation or you can stand at a printer and you can directly communicate [00:27:35] Speaker 01: from that multifunction peripheral with email application software. [00:27:39] Speaker 01: All you have to do is access the document suitcase in the upper left-hand portion of the interface in Figure 9, drop the document into a communication profile, and if that profile has email, which it can, or a fax, which it can, or a printer, which it can, you're standing at the scanner. [00:27:58] Speaker 01: You have interfaced with an email application software. [00:28:04] Speaker 01: through this common interface. [00:28:06] Speaker 02: So you're saying the multi-function peripheral and the interface and the email can be the same thing, and they're still interfacing? [00:28:17] Speaker 01: I'm not sure I understand the question. [00:28:19] Speaker 01: What Harkins allows you to do, and what ECN, the best example of it is in Harkins, is you can stand at the scanner and you can send a document via email. [00:28:33] Speaker 01: by simply taking the report that you've scanned and dropping it into a communication profile. [00:28:40] Speaker 02: I don't dispute that you can do that. [00:28:42] Speaker 02: That still doesn't show that the multifunction peripheral is interfacing with the email application. [00:28:50] Speaker 02: That the two are interfacing between each other. [00:28:56] Speaker 01: How is it not interfacing between each other if I can stand at a scanner and drag the document that I just scanned, drop it, and send it via email? [00:29:07] Speaker 01: I don't understand how that is not interfacing with email application software. [00:29:15] Speaker 02: It's not interfacing between the two. [00:29:17] Speaker 02: That's the problem. [00:29:18] Speaker 02: That's my problem. [00:29:22] Speaker 01: So there is a separate step in claim four of communicatively linking. [00:29:27] Speaker 01: There is another step in claim four for transmitting. [00:29:33] Speaker 01: The interface that's described in the provisional application that MPHJ places so much weight on says the patent should protect our interface. [00:29:43] Speaker 01: This is what they're relying on for interfacing. [00:29:46] Speaker 02: So you're presupposing [00:29:48] Speaker 02: that the rendering and the transmission don't have to be in the same step. [00:29:53] Speaker 01: But they certainly don't in claim four. [00:29:55] Speaker 01: There's a rendering step and there is a transmission step. [00:30:00] Speaker 01: And dependent claim six, which is an issue here, says there's a go button that can accomplish one or more of those steps. [00:30:15] Speaker 01: So claim four has a rendering step. [00:30:22] Speaker 01: Claim four, that's step B. It has communicatively linking, which is step C. It has two interfacing steps. [00:30:29] Speaker 01: Then it says you can communicate, communicating over a LAN and then transmitting a document to one of the external destinations. [00:30:37] Speaker 01: The very language that MPHJ repeatedly relies on to define interfacing [00:30:44] Speaker 01: That portion of the provisional just talks about interface as a noun. [00:30:49] Speaker 01: You don't see the verb interfacing there. [00:30:51] Speaker 01: It just talks about, at the bottom of 1820, this patent should simply protect our interface. [00:30:57] Speaker 01: And the interfacing step in Plane 4, that's met by Harkins. [00:31:03] Speaker 01: It's met by X and S as well. [00:31:05] Speaker 01: XNS has a common interface, and that's what the virtual copier is an interface. [00:31:10] Speaker 01: At the virtual copier, you select, this is at, I guess, figure 29 in the patent. [00:31:22] Speaker 01: You have your virtual copier interface. [00:31:26] Speaker 01: You select an open file, or you select a from file, you select a to file, and you hit go. [00:31:34] Speaker 04: Okay, can we move on? [00:31:37] Speaker 04: Yes. [00:31:37] Speaker 04: Okay, I think we have the position. [00:31:39] Speaker 04: Thank you, Mr. Wright. [00:31:42] Speaker 04: Mr. Ganti, we'll add a couple of minutes. [00:31:46] Speaker 04: Mr. Ganti's rebuttal time. [00:31:55] Speaker 00: Proceed. [00:31:57] Speaker 00: Thank you. [00:31:57] Speaker 00: I'll start off with the interface. [00:31:59] Speaker 00: I'll work my way backwards to the Go button. [00:32:02] Speaker 00: For the record, the appellant is not arguing that a user interface is the interface. [00:32:07] Speaker 00: The interface is achieved through protocols. [00:32:10] Speaker 00: And Claim4 requires those protocols to be used to achieve an interface between an actual scanner device and email application software. [00:32:23] Speaker 00: So there has to be protocols used. [00:32:25] Speaker 00: So just a user interface that allows a user to move things around and manipulate a document, first of all, there's no evidence that protocols are used for that purpose. [00:32:36] Speaker 00: And second, that's really not interfacing the scanner itself to email software application. [00:32:41] Speaker 00: And in fact, it proves that there is no interface, because a user has to go in and manually do that. [00:32:47] Speaker 00: And to go back to the provisional application that we just discussed on 18 [00:32:56] Speaker 00: I believe it's 1820. [00:32:59] Speaker 00: This is excerpt from the provisional application. [00:33:03] Speaker 00: It says, the imagine virtual copier interface. [00:33:07] Speaker 00: But this definition right here of the virtual copier interface is not describing the user interface. [00:33:15] Speaker 00: It's describing the user's experience once you achieve this interface, which is a communicative link between the scanner and the email software application. [00:33:25] Speaker 00: So again, the appellant's not relying on user interfaces to move documents around. [00:33:30] Speaker 00: In fact, a user interface is part of the, it does achieve the Go button. [00:33:38] Speaker 00: So there is a user interface for the Go button, but for actually linking the scanner to the email software application, that's interfacing those two things using a protocol to do that. [00:33:53] Speaker 00: The second point is, [00:33:54] Speaker 00: that in claim one, email application software is required by the claims. [00:34:01] Speaker 00: It's required as an external destination. [00:34:04] Speaker 00: And the only aspect of an external destination, at the bare minimum, is that it has to be the thing that receives the document that's being transmitted. [00:34:16] Speaker 00: That's what qualifies it as an external destination. [00:34:20] Speaker 00: What we just heard is that an external destination may just happen to be in the claim system, but it doesn't do anything besides using protocols. [00:34:29] Speaker 00: But that's not true. [00:34:30] Speaker 00: The claims require, the purpose of this is to have an external destination that actually receives the thing that's being scanned or copied. [00:34:39] Speaker 00: And the claims require email software application to be an external destination as a condition, which does have patentable weight. [00:34:48] Speaker 02: Well, how do you respond to the argument that the external destination could be an email application, but you could have a local file in the interim? [00:34:57] Speaker 00: That's required. [00:34:58] Speaker 00: So a local file, and give me just a moment to flip through the claims so I can. [00:35:07] Speaker 00: So a local file is contemplated by the claims. [00:35:12] Speaker 00: But the claim system has to support an external destination that is email software application. [00:35:18] Speaker 00: So yes, a local file is a requirement of the claims, but the claims go beyond that. [00:35:23] Speaker 00: The inquiry just doesn't end once you have a local file that's an external destination. [00:35:28] Speaker 00: Inquiry continues to determine whether the prior art teaches the condition where the external destination is email application software. [00:35:42] Speaker 02: Finally, my last point is that you [00:35:45] Speaker 02: argue that there's a difference between a conditional application and an optional application. [00:35:50] Speaker 02: Where do you get that difference in terms of our case law? [00:35:55] Speaker 00: So an optional requirement, and that's a case cited by the appellee. [00:36:02] Speaker 00: And there is actually an optional limitation in claim one. [00:36:05] Speaker 00: It's at the very end. [00:36:06] Speaker 00: There is a claim requirement that states that [00:36:15] Speaker 00: the very last clause, and is optionally printable by said printer, that's an optional limitation. [00:36:22] Speaker 00: We can see that has no patentable weight. [00:36:24] Speaker 00: But a conditional limitation does. [00:36:26] Speaker 00: And the case law to support that is the Lincoln National Life case, where the even if clause was considered an optional limitation. [00:36:41] Speaker 04: Any more questions? [00:36:44] Speaker 04: Thank you. [00:36:44] Speaker 04: Thank you both, Mr. Gaddy and Mr. Wright. [00:36:47] Speaker 04: The case is taken under submission.