PTAB

IPR2016-00723

Unified Patents Inc v. Ruby Sands LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Electronic Assembly Having an Image Transfer Device and a Computer
  • Brief Description: The ’633 patent discloses an electronic assembly designed to reduce the manufacturing cost of multi-function devices by minimizing their onboard memory. The system comprises an image transfer device (e.g., a scanner or fax) with basic functionality, which can be removably connected to a computer to access "extended" functions leveraging the computer's superior processing and memory capacity.

3. Grounds for Unpatentability

Ground 1: Obviousness/Anticipation over Matsumoto and Combinations - Claims 1-18 and 20-26 are anticipated by or obvious over Matsumoto in view of Xerox, Fite, and Ebner.

  • Prior Art Relied Upon: Matsumoto (Patent 6,373,598), Xerox (Xerox WorkCentre Pro 635/645/657 User Guide), Fite (Patent 5,666,489), and Ebner (Patent 5,452,094).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Matsumoto disclosed the core invention: a facsimile machine (image transfer device) removably connected to a personal computer. When disconnected, the fax machine performed basic transmission functions (the "first type" of menu). When connected, it could use application software stored on the computer's hard drive to perform additional functions like multi-copying or delayed transmission (the "second type" of menu, with portions stored on the computer).
    • Motivation to Combine: While Matsumoto implied menus for its functions, it did not explicitly detail them. Petitioner asserted that Xerox, a well-known user guide for a similar device, disclosed the exact type of menu structure for communication modes (e.g., "memory send," "direct send") that Matsumoto's device would require. A person of ordinary skill in the art (POSITA) would combine Xerox's menu system with Matsumoto's device to improve usability, reduce user error, and provide a familiar interface for the advanced functions, which was a simple and predictable design choice. Fite and Ebner were cited to teach specific additional features recited in dependent claims, such as polling signals and adding watermarks.
    • Expectation of Success: Combining a known menu interface with a known device to improve its functionality was a routine design practice that would yield predictable results.

Ground 2: Obviousness over Fite and Combinations - Claims 1-18 and 20-26 are obvious over Fite in view of Xerox, Ebner, and Motoyama.

  • Prior Art Relied Upon: Fite (Patent 5,666,489), Xerox (User Guide), Ebner (Patent 5,452,094), and Motoyama (Patent 5,701,184).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued Fite disclosed a system for enhancing the capabilities of office products (like a fax machine) by coupling them to a PC. Fite explicitly taught a "standard mode" where the device operates standalone (disclosing the "first type" of menu) and an "enhanced mode" where it uses the PC's resources for advanced features like secure messaging and binary file transfer (disclosing the "second type" of menu stored on the computer).
    • Motivation to Combine: Fite did not expressly describe a display or menu interface. Petitioner argued a POSITA would find it obvious to modify Fite's fax machine to include a display with a menu structure, as taught by Xerox, for the same reasons as in Ground 1: to make the device's standard and enhanced features accessible and user-friendly. The combination would allow users to visualize and select options, enhancing the overall quality of experience. Motoyama was cited to teach transferring scanned images to a printer, and Ebner for features like adding logos.
    • Expectation of Success: Integrating a standard display and menu system into a fax machine to control its functions was a well-known, predictable, and necessary step to make the features taught by Fite commercially viable and usable.

Ground 3: Anticipation by Motoyama - Claims 19 and 20 are anticipated by Motoyama.

  • Prior Art Relied Upon: Motoyama (Patent 5,701,184).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that Motoyama taught every element of method claim 19. Motoyama disclosed a multi-function machine (image transfer device) with a scanner connected to a host computer. A user could select a "registered image" (e.g., a "CONFIDENTIAL" stamp) from a selection menu on the device. This selection constituted "electronic data including at least a portion of an image transfer menu" that was uploaded from the computer. Motoyama’s processor then automatically merged this uploaded data with an image read by the scanner and transferred the merged image to a second medium (paper via a printer). For claim 20, Petitioner argued that Motoyama's disclosure of storing inputs in memory meant that uploaded data would remain available after the computer was disconnected.

  • Additional Grounds: Petitioner asserted an additional anticipation challenge against claims 19 and 20 based on Shiimori (Patent 7,315,386).

4. Key Claim Construction Positions

  • "image transfer menu": Petitioner argued this term should be construed broadly as "a list of options or commands related to the function or operation of the device." This construction was not limited to image transfer functions, based on dependent claims that included features for selecting language, device maintenance, or adding watermarks, which are general operational settings.
  • "automatically": Petitioner proposed this term means "an action takes place at the image transfer device 'without user interaction with the computer.'" This construction was critical because it allowed for user initiation at the device itself (e.g., pressing a button on the scanner), as long as no further interaction with the host computer was required for the process to complete.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-26 of the ’633 patent as unpatentable under 35 U.S.C. §§ 102 and/or 103.