  United States Court of Appeals
      for the Federal Circuit
                ______________________

    MPHJ TECHNOLOGY INVESTMENTS, LLC,
                Appellant

                          v.

   RICOH AMERICAS CORPORATION, XEROX
  CORPORATION, LEXMARK INTERNATIONAL,
                   INC.,
                  Appellees
           ______________________

                      2016-1243
                ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
00538.
                 ______________________

              Decided: February 13, 2017
               ______________________

   VIVEK GANTI, Hill Kertscher & Wharton LLP, Atlanta,
GA, argued for appellant. Also represented by STEVEN G.
HILL.

   JON WRIGHT, Sterne Kessler Goldstein & Fox, PLLC,
Washington, DC, argued for appellees. Also represented
by MICHAEL D. SPECHT, RICHARD M. BEMBEN.
                ______________________
Before NEWMAN, LOURIE, and O’MALLEY, Circuit Judges.
2                    MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.



    Opinion for the court filed by Circuit Judge NEWMAN.
    Opinion concurring in part, dissenting in part filed by
                 Circuit Judge O’MALLEY.
NEWMAN, Circuit Judge.
     MPHJ Technology Investments, LLC appeals the de-
cision of the Patent Trial and Appeal Board (“Board” or
“PTAB”), on Inter Partes Review, that claims 1–8 of
MPHJ’s U.S. Patent No. 8,488,173 (“the ’173 Patent”) are
invalid on the grounds of anticipation or obviousness. 1
On appellate review, we affirm the Board’s decision.
    To determine the validity of a patented invention, the
meaning and scope of the claims are first determined. See
Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc., 183 F.3d
1347, 1353 (Fed. Cir. 1999) (“[T]he first step in any validi-
ty analysis is to construe the claims of the invention to
determine the subject matter for which patent protection
is sought.”). As ratified by the Supreme Court in Cuozzo
Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016),
when unexpired patents are reviewed by the Board, the
claims are given their broadest reasonable interpretation
consistent with the specification and the prosecution
history, from the viewpoint of persons skilled in the field
of the invention.
                        BACKGROUND
    The ’173 Patent, entitled “Distributed Computer Ar-
chitecture and Process for Document Management,”
describes a system and method that “extends the notion of
copying from a process that involves paper going through
a conventional copier device, to a process that involves
paper being scanned from a device at one location and


     1  Ricoh Ams. Corp. v. MPHJ Tech. Invs., No.
IPR2014-00538, 2015 WL 4911675, (P.T.A.B. Aug. 12,
2015) (“Bd. Op.”).
MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.                 3



copied to a device at another location.” ’173 Patent, col. 5,
ll. 51–55. The ’173 Patent calls its invention a “Virtual
Copier” (“VC”) whose purpose is “to enable a typical PC
user to add electronic paper processing to their existing
business process.” ’173 Patent, col. 5, ll. 47–50. The
patent states that its VC replicates an image “using a
single GO or START button, to do a similar operation in
software so that the image gets seamlessly replicated into
other devices or applications or the Internet.” ’173 Pa-
tent, col. 6, ll. 38–43. Patent Figure 28 illustrates various
input devices and destinations, moving by software
through the virtual copier:
4                  MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.



     The challengers, Ricoh Americas Corporation, Xerox
Corporation, and Lexmark International, Inc. (collective-
ly, “Petitioner”), requested Inter Partes Review of claims
1–8, all of the ’173 Patent claims, in accordance with 35
U.S.C. § 311 et seq. The PTAB instituted review, con-
strued the claims, conducted a hearing, and held the
claims unpatentable based on several prior art references.
The PTAB found claims 1–8 anticipated by the Xerox
Network Systems Architecture General Information Man-
ual dated April 1985 (“XNS”) and the XNS features in
Xerox 150 Graphic Input Station Operator and Reference
Manual dated January 1985 (“GIS 150”). The PTAB also
found claims 1–8 anticipated by U.S. Patent No. 5,513,126
to Harkins, and/or obvious in view of the combination of
Harkins and U.S. Patent No. 5,818,603 to Motoyama. On
this appeal MPHJ argues that the Board incorrectly
broadly construed the claims and that on the correct
narrow claim construction the claims are neither antici-
pated nor obvious.
    System claim 1 and method claim 4, the independent
claims, were deemed representative:
    1. A system capable of transmitting at least one of
    an electronic image, electronic graphics and elec-
    tronic document to a plurality of external destina-
    tions including one or more of external devices,
    local files and applications responsively connecta-
    ble to at least one communication network, com-
    prising:
    at least one network addressable scanner, digital
    copier or other multifunction peripheral capable of
    rendering at least one of said electronic image,
    electronic graphics and electronic document in re-
    sponse to a selection of a Go button;
    at least one memory storing a plurality of inter-
    face protocols for interfacing and communicating;
MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.                 5



   at least one processor responsively connectable to
   said at least one memory, and implementing the
   plurality of interface protocols as a software appli-
   cation for interfacing and communicating with the
   plurality of external destinations including the
   one or more of the external devices and applica-
   tions,
   wherein one of said plurality of interface protocols
   is employed when one of said external destina-
   tions is email application software;
   wherein a second of said plurality of interface pro-
   tocols is employed when the one of said external
   destinations is a local file;
   wherein a plurality of said external destinations is
   in communication with said at least one network
   addressable scanner, digital copier or other multi-
   function peripheral over a local area network;
   wherein at least one of said external destinations
   receives said electronic image, electronic graphics
   and electronic document as a result of a transmis-
   sion over the at least one communication network;
   a printer other than said at least one network ad-
   dressable scanner, digital copier or other multi-
   function peripheral;
   wherein, in response to the selection of said Go
   button, an electronic document management sys-
   tem integrates at least one of said electronic im-
   age, electronic graphics and electronic document-
   using software so that said electronic image, elec-
   tronic graphics and electronic document gets
   seamlessly replicated and transmitted to at least
   one of said plurality of external destinations;
   wherein at least one of said electronic image, elec-
   tronic graphics and electronic document is pro-
6                  MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.



    cessed by said at least one network addressable
    scanner, digital copier or other multifunction pe-
    ripheral into a file format, and wherein a plurality
    of said external destinations are compatible with
    said file format without having to modify said ex-
    ternal destinations; and
    wherein upon said replication and seamless
    transmission to at least one of said external desti-
    nations, said electronic image, electronic graphics
    and electronic document is communicable across a
    network to at least three other of said external
    destinations, and is optionally printable by said
    printer.
’173 Patent, col. 86, ll. 9–63. MPHJ states that the
claimed “seamless” transmission requires a one-step
operation without human intervention, and that this
system is not shown in the prior art.
    For method claim 4, MPHJ emphasizes the provision
for “interfacing between at least one of said scanner,
digital copier or other multifunction peripheral and email
application software” in claim section (d), and argues that
this means that the operation from scanner to email
destination occurs in a single step. Claim 4 states:
    4. A method of managing at least one of an elec-
    tronic image, electronic graphics or electronic doc-
    ument comprising the steps of, in any order:
    (a) transmitting a plurality of any of said electron-
    ic image, electronic graphics or electronic docu-
    ment from a source address to a plurality of
    external destinations including one or more of ex-
    ternal devices, local files and applications respon-
    sive to said source address using at least one
    communication network;
    (b) rendering said plurality of any of said electron-
    ic image, electronic graphics or electronic docu-
MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.                 7



   ment by a network addressable scanner, digital
   copier or other multifunction peripheral located at
   said source address;
   (c) communicatively linking said scanner, digital
   copier or other multifunction peripheral with said
   plurality of said external destinations via applica-
   tion-level interface protocols;
   (d) interfacing between at least one of said scan-
   ner, digital copier or other multifunction periph-
   eral and email application software using a first of
   said interface protocols;
   (e) interfacing between at least one of said scan-
   ner, digital copier or other multifunction periph-
   eral and a local file using a second of said
   interface protocols;
   (f) communicating over a local area network be-
   tween said at least one of said scanner, digital
   copier or other multifunction peripheral and said
   plurality of said external destinations;
   (g) transmitting a first electronic image, electronic
   graphics or electronic document from said at least
   one of said scanner, digital copier or other multi-
   function peripheral to at least one of said external
   destinations where at least a portion of said
   transmitting of step (g) occurs by communicating
   via Internet, and using one or more of said inter-
   face protocols;
   (h) integrating via at least one processor commu-
   nicatively coupled with said at least one of said
   scanner, digital copier or other multifunction pe-
   ripheral, a second electronic image, electronic
   graphics or electronic document so that said sec-
   ond electronic image, electronic graphics or elec-
   tronic document gets seamlessly replicated and
8                  MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.



    transmitted to at least one of said plurality of said
    external destinations;
    (i) processing via said at least one processor said
    plurality of any of said electronic image, electronic
    graphics or electronic document into a uniform file
    format, wherein said plurality of said external
    destinations are compatible with said format
    without having to modify said external destina-
    tions; and
    (j) seamlessly transmitting said first or second
    electronic image, electronic graphics or electronic
    document over said network from a first external
    destination to another of said external destina-
    tions.
’173 Patent, col. 87, l. 10–col. 88, l. 20. MPHJ stresses
that “seamless” transmission means that “no user inter-
vention is needed” between copying and destination.
MPHJ Br. 16. MPHJ states that it is “irrelevant . . .
[w]hether intermediate components exist between the
scanner and application software.” MPHJ Br. 17.
    The PTAB construed the claims as including scanning
and emailing, whether in separate steps or in a single
step, with or without user intervention by human or by
machine. On this construction, the PTAB invalidated the
claims.
                   Claim Construction
    MPHJ states that the terms “interfacing” and “Go
button” represent a single-step operation, and that the
PTAB erred in construing the claims as not limited to
single-step operation.
    The PTAB construed “interfacing” to mean “making a
direct or indirect connection between two elements so
they can work with each other or exchange information.”
Bd. Op. 15. MPHJ argues that “interfacing” requires
MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.                 9



direct single-step transfer from the scanner or other
peripheral device, to email or the Internet or other desti-
nation, and that the ’173 Patent’s system “is direct be-
cause it excludes additional user intervention beyond
initiating the process.” MPHJ Br. 17. MPHJ describes
the Xerox prior art system as “drag and drop” in two
steps. Responding to these arguments, the Board held
that “nothing limits an ‘interface’ to a connection between
two components.” Bd. Op. 15.
    MPHJ argued similarly that the term “Go button” in
the claims requires “an operation that begins a process
and requires no further action from the user to complete,”
Prelim. Resp. at 14, and is implemented by the claim term
“application” as “a discrete software program executable
on an operating system for the purpose of accomplishing a
task.” Id. at 7–11. The Board ruled that the claims are
not limited to a single-step transfer from scanner to email
or other destination, and found the claims anticipated by
the button in the XNS system that “can initiate a scan in
one step and send a document via email in another.” Bd.
Op. 24–25.
    MPHJ states that a passage from the ’173 Patent
“leaves no doubt that the scope of the ‘GO button’ is a
single function that permits copying a document and
integrating it into a software application (e.g., third party
software) in one step.” MPHJ Br. 20. That passage
states:
    VC extends the notion of a copier, which simply
    replicates the image of an original document onto
    another piece of paper using a single GO or
    START button, to do a similar operation in soft-
    ware so that the image gets seamlessly replicated
    into other devices or applications or the Internet.
’173 Patent, col. 46, ll. 36–40. MPHJ states that “seam-
lessly” means an automatic transfer in one step. Howev-
10                  MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.



er, the Board held that the specification and claims do not
require only a single-step operation.
    MPHJ argues that its claim interpretation is support-
ed by and required by its Provisional Application No.
60/108,798 (“the ’798 Provisional”), citing two statements
in the Provisional on “one step” operation using a single
button:
     Patent: The IMAGinE Virtual Copier Interface: A
     Simple Method of Presenting to a User the Com-
     plex Operation of Copying Files or Electronic Im-
     ages to and from Digital Imaging Devices and/or
     Software Applications in One Step.
’798 Provisional at 7. The Provisional states:
     The IMAGinE Virtual Copier can copy paper from
     a physical device directly into a third-party soft-
     ware application in one step. Using other applica-
     tions, such as Visioneer’s Paperport or Xerox’s
     Pagis, the user must first “import” or scan paper
     into the capture application and then drag or di-
     rect the output to another location. With the IM-
     AGinE Virtual Copier, a single button (the Go
     button) directly copies paper from a scan-like de-
     vice (either a copier with a scan attachment or a
     scanner) and places it within the third-party ap-
     plication.
’798 Provisional at 6. MPHJ argues that these state-
ments “expressly limited the scope of the invention” to a
one-step copying and sending process, MPHJ Br. 14, and
that the claims cannot reasonably be construed as the
separate steps of copying and sending. MPHJ states that
such prior art was distinguished in the ’798 Provisional.
    Petitioner points out that the statements in the ’798
Provisional on which MPHJ now relies were omitted from
the final application. MPHJ responds that these omitted
sections were not explicitly disclaimed, and therefore that
MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.               11



they are part of the prosecution history and are properly
relied on to explain and limit the claims, even if the
passages do not appear in the issued patent.
    We agree that a provisional application can contribute
to understanding the claims. See Trs. of Columbia Univ.
in New York v. Symantec Corp., 811 F.3d 1359, 1365 (Fed.
Cir. 2016) (looking to the provisional application for
guidance as to claim construction); Vederi, LLC v. Google,
Inc., 744 F.3d 1376, 1383 (Fed. Cir. 2014) (same). In this
case, it is the deletion from the ’798 Provisional applica-
tion that contributes understanding of the intended scope
of the final application.
    We conclude that a person of skill in this field would
deem the removal of these limiting clauses to be signifi-
cant. The ’173 Patent in its final form contains no state-
ment or suggestion of an intent to limit the claims to the
deleted one-step operation. Neither the specification nor
the claims state that this limited scope is the only intend-
ed scope. Instead, the ’173 Patent describes the single-
step operation as “optional.”
    The ’173 Patent’s abstract states, “[t]he system and/or
method is software that manages paper so that it can be
electronically and seamlessly copied in and out of devices
and business applications with an optional single-step
operation.” The ’173 Patent specification states, “I have
further determined that it is desirable to enable software
that manages paper so that it can be electronically and
seamlessly copied in and out of devices and business
applications (such as Microsoft Office, Microsoft Ex-
change, Lotus Notes) with an optional single-step Go
operation.” ’173 Patent, col. 3, ll. 35–39.
    These statements that single-step operation is “op-
tional” accord with the change from the ’798 Provisional
to the final patent. A person skilled in this field would
reasonably conclude that the inventor intended that
single-step operation would be optional, not obligatory.
12                 MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.



    We affirm the Board’s claim construction as not lim-
ited to single-step operation of copying and transmitting.
                      Anticipation
  The Board found the claims anticipated by the Xerox
XNX system and also by the Xerox-owned Harkins patent.
    Petitioner’s expert Dr. Melen explained that the Xerox
GIS 150 is “an XNS system element which uses XNS
protocols to communicate with other devices and services
on the internet.” Melen Decl. 28 (citing XNS at 122). The
XNS reference states that “[t]he Xerox 150 scanner uses
this model in providing scanned image service to XNS
users,” and that the XNS system “enables a user to digit-
ize a hardcopy image by scanning it at the scanner.” XNS
at 122. “The digitized image (in RES [Raster Encoding
Standard]) may be sent to a specific file in a File Service
for storage, or to a Print Service for printing . . . .” Id.
The XNS reference states that scanned documents can be
“distributed with XNS mail, edited at a workstation, or
sent to any device that is directly or indirectly connected
to the internet (including remote facsimile machines).”
XNS at 125.
    MPHJ did not dispute that “the GIS 150 does support
scanning to a file, a file server, and it does support scan-
ning to a print server.” Hr’g Tr. at 30:24–31:2. MPHJ
argued that the Xerox system scans to email only in two
steps. Id. at 35:22–36:11. The Board found that “XNS
discloses scanning and distribution of documents [in] two
steps,” Bd. Op. 25, and that these steps include direct or
indirect connection. On the Board’s correct construction
that claims 1 and 4 are not limited to a single-step opera-
tion, the Board’s finding of anticipation by the XNS
system is supported by substantial evidence and is sus-
tained.
    The Board also found anticipation by the Harkins pa-
tent, owned by Xerox, which shows a network “having
MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.               13



interconnected printers, scanners, facsimile devices or file
servers.” Harkins, col. 5, ll. 32–col. 6, ll. 36. The record
states that Harkins relates to the XNS System. Harkins
describes “a method for a sender to automatically distrib-
ute information to a receiver on a network using devices
(such as printers and facsimile machines) and communi-
cation channels (such as electronic mail) defined in a
receiver profile.” Harkins, col. 4, ll. 40–46. The Board
found that “Harkins discloses both scanning and email
transmission,” and “discloses a plurality of interface
protocols.” Bd. Op. 35. The Board credited Petitioner’s
expert witness’ testimony that Harkins inherently dis-
closes employing email protocols to transmit email. Bd.
Op. 35–36. Substantial evidence supports the Board’s
finding that Harkins contemplates the same sequential
scanning and transmission as discussed for the XNS
system, and anticipates the ’173 Patent’s claims as con-
strued by the Board.
                     Other Claim Terms
    MPHJ also argues that the Board erred in its con-
structions of the claim terms “application” and “render-
ing.” The Board construed “application” as it did in
separate IPR proceedings on a related patent with the
same specification and different claims. We discern no
error in adopting this construction.
    The Board did not construe “rendering.” MPHJ ar-
gues that the Board misapplied the prior art by finding
that “the claims do not preclude rendering from occurring
after the ‘electronic image’ is transmitted.” Bd. Op. 34.
MPHJ states that the “rendering” step must be “per-
formed by the network addressable scanner, digital
copier, or other multifunction peripheral.” MPHJ Br. 24.
According to MPHJ, “a proper construction of ‘rendering’
would tie this operation to the scanner/copier,” MPHJ Br.
37, for “[i]t is technically impossible for a scanner to
transmit a document before it has a chance to render that
14                 MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.



document.” MPHJ Br. 23. The Petitioner does not disa-
gree. However, the Petitioner states that Harkins shows
“rendering” performed by the fax machine when the
electronic document is transmitted; thus Petitioner ar-
gues that MPHJ’s proposed definition of “rendering” does
not avoid anticipation.
    The Board found that “Harkins teaches that the recip-
ient of a document may set up a ‘profile describing the
preferred form (facsimile, electronic mail, voice mail, hard
copy, color or black, file server, etc.) and service (the
specific printer, facsimile machine etc.) documents should
take to be rendered.’” Bd. Op. 34. The Board held that no
claim limits “rendering” to single-step operation. Sub-
stantial evidence supports the finding that Harkins shows
rendering of electronic documents.
   We have considered MPHJ’s additional arguments,
and deem them unpersuasive of reversible error in the
Board’s conclusion of anticipation.
                      Obviousness
    As an alternative ground, the PTAB invalidated
claims 1–8 on the ground of obviousness. The PTAB
combined the Motoyama reference with Harkins, citing
Motoyama for its teaching of the connection of devices
such as copiers, printers, and fax machines, to an office
network. Bd. Op. 37. Motoyama states that different
machines communicate with each other according to
different protocols, and describes a “control/diagnostic
system” that includes a database of communication proto-
cols for various network machines. Motoyama, col. 1, ll.
41–43; col. 1, ll. 47–58.
    Although MPHJ argued at trial that a person of ordi-
nary skill would not have combined Harkins and Moto-
yama, this argument is not pressed on appeal. On our
sustaining the Board’s finding of anticipation, we do not
decide the Board’s alternative ruling of obviousness.
MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.             15



                         CONCLUSION
    The ruling of invalidity of claims 1–8 of the ’173 Pa-
tent is
                        AFFIRMED.
  United States Court of Appeals
      for the Federal Circuit
                ______________________

    MPHJ TECHNOLOGY INVESTMENTS, LLC,
                Appellant

                           v.

   RICOH AMERICAS CORPORATION, XEROX
  CORPORATION, LEXMARK INTERNATIONAL,
                   INC.,
                  Appellees
           ______________________

                      2016-1243
                ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
00538.
                 ______________________

O’MALLEY, Circuit Judge, concurring in part, dissenting
in part.
    I agree that the Board correctly construed the term
“anticipation” in U.S. Patent No. 8,488,173 (“the ’173
patent”). I would find, though, that the Board miscon-
strued the terms “Go button” and “interfacing” to permit
the use of manual intervention to render and transmit a
scanned document. See Ricoh Ams. Corp. v. MPHJ Tech.
Invs., LLC, No. IPR2014-00538, 2015 WL 4911675, at *1,
*10–22 (P.T.A.B. Aug. 12, 2015). Under the construction
of the disputed claim terms comporting with this limita-
tion, I would affirm the Board’s finding that claims 1–3
2                    MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.



are anticipated, but reverse its finding that claims 4–8
are anticipated. From the majority’s conclusions other-
wise, I respectfully dissent.
                        BACKGROUND
                     A. The ’173 Patent
     The ’173 patent is titled “distributed computer archi-
tecture and process for document management.” In short,
the ’173 patent “manages paper so that it can be electron-
ically and seamlessly copied in and out of devices and
business applications . . . with an optional single-step
operation.” ’173 patent, at Abstract. The ’173 patent
describes the invention in terms of a system, software,
and processes for implementing a “Virtual Copier” (“VC”).
The VC “[i]n its simplest form . . . extends the notion of
copying from a process that involves paper going through
a conventional copier device, to a process that involves
paper being scanned from a device at one location and
copied to a device at another location.” Id. col. 45, ll. 48–
53. The patent covers copying of both physical and elec-
tronic paper. See, e.g., id. col. 6, ll. 46–48 (“This GO
button can copy paper, whether physical or electronic,
from one device and or application to another device
and/or application.”).
    On November 13, 1998, Laurence Klein, the named
inventor of the ’173 patent, filed Provisional Patent App.
No. 60/108,798 (“the ’798 provisional application”). The
’798 provisional application is incorporated by reference
into the ’173 patent. Id. col. 1, ll. 14–16.
    Independent claims 1 and 4 of the ’173 patent are at
issue on appeal. The dependent claims rise and fall with
the independent claims.
    Claim 1 reads:
    A system capable of transmitting at least one of
    an electronic image, electronic graphics and elec-
MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.                3



   tronic document to a plurality of external destina-
   tions including one or more of external devices, lo-
   cal files and applications responsively connectable
   to at least one communication network, compris-
   ing:
   at least one network addressable scanner, digital
   copier or other multifunction peripheral capable of
   rendering at least one of said electronic image,
   electronic graphics and electronic document in re-
   sponse to a selection of a Go button;
   ...
   at least one processor responsively connectable to
   said at least one memory, and implementing the
   plurality of interface protocols as a software ap-
   plication for interfacing and communicating with
   the plurality of external destinations including
   the one or more of the external devices and appli-
   cations,
   ...
   wherein one of said plurality of interface protocols
   is employed when one of said external destinations
   is email application software;
   ...
   wherein, in response to the selection of said Go
   button, an electronic document management sys-
   tem integrates at least one of said electronic im-
   age, electronic graphics and electronic document
   using software so that said electronic image, elec-
   tronic graphics and electronic document gets
   seamlessly replicated and transmitted to at least
   one of said plurality of external destinations . . .
Id. col. 86, ll. 9–50 (emphases added). Claim 4 is a meth-
od claim, and the relevant limitations recite:
4                  MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.



    A method of managing at least one of an electronic
    image, electronic graphics or electronic document
    comprising the steps of, in any order:
    ...
    (c) communicatively linking said scanner, digital
    copier or other multifunction peripheral with said
    plurality of said external destinations via applica-
    tion-level interface protocols;
    (d) interfacing between at least one of said scan-
    ner, digital copier or other multifunction periph-
    eral and email application software using a first of
    said interface protocols . . .
Id. col. 87, ll. 11–27 (emphases added).
                 B. Prior Art References
    The Board instituted inter partes review based on
three prior art references: (1) Xerox Corporation, Xerox
Network Systems Architecture General Information Man-
ual, Apr. 1985 (“XNS”) (with inherent features evidenced
by GIS 150, Xerox Corporation, Xerox 150 Graphic Input
Station Operator And Reference Manual 150, Jan. 1985
(“GIS 150”)); (2) U.S. Patent No. 5,513,126 to Harkins
(“Harkins”); and (3) U.S. Patent No. 5,818,603 to Moto-
yama (“Motoyama”).
                          i. XNS
    The XNS manual discusses computer networking,
particularly in the context of integrated office systems
and document management. XNS “provides information
on the standards and protocols that comprise the architec-
ture” of Xerox Network Systems. J.A. 413. XNS also
describes “document management,” which involves creat-
ing, capturing, replicating, and printing electronic or
paper documents at the office. J.A. 416. XNS discloses a
“Graphic input station” (“GIS”) as one networked device
in its “Graphic input model.” “The Xerox 150 scanner
MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.                  5



uses [the Graphic input] model in providing scanned
image service to XNS users.” J.A. 520.
     The GIS 150 manual describes the inherent capabili-
ties of the Xerox 150 scanner. The GIS 150 manual
discloses a “START button” that “causes the 150 GIS to
begin scanning. . . . After scanning is complete the image
is automatically sent to the selected destination, and the
display will flash SENDING while transmission is taking
place.” J.A. 633. The GIS 150 manual also states that
“[t]here can be a maximum of five destinations from
which to choose. The destination device can be either a
file server or a print server.” J.A. 738. Scanned docu-
ments can be “distributed with XNS mail, edited at a
workstation, or sent to any device that is directly or
indirectly connected to the internet (including remote
facsimile machines).” J.A. 523. The GIS 150 manual
discloses scanning a document and sending it to some
electronic repository, and XNS discloses accessing the
repository and emailing the documents to an external
destination in two steps.
                          ii. Harkins
    Harkins discloses a Xerox network “having intercon-
nected printers, scanners, facsimile devices or file serv-
ers.” Harkins, col. 5, ll. 47–48. The invention enables a
sender to “automatically distribute information to a
receiver on a network using devices (such as printers and
facsimile machines) and communication channels (such as
electronic mail)” defined by a receiver’s user profile. Id. at
Abstract. Similar to XNS, Harkins teaches scanning a
document and transmitting it directly to a local file.
     Harkins also teaches transmitting a document to an
external device or application that renders the document
in the manner specified by the recipient’s user profile. Id.
col. 10, ll. 37–45. To initiate the transmission, the sender
of a document “select[s] a document from document source
45 (e.g. report 34) and move[s] it to [the desired] commu-
6                  MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.



nication channel.” Id. col. 10, ll. 56–63. The manual
intervention of the sender is what the parties refer to as
“Harkins’s drag-and-drop operation.”
                      iii. Motoyama
    Motoyama relates to communicating with and moni-
toring, diagnosing, and controlling machines—including a
facsimile machine or different copiers—using multiple
communication protocols. J.A. 37. It is undisputed that
Motoyama discloses some of the claim limitations at issue,
including “at least one memory” and “at least one proces-
sor.”
                  C. Procedural History
    On March 25, 2014, Ricoh Americas Corporation, Xer-
ox Corporation, and Lexmark International Corporation,
Inc. (collectively, “Appellees”) petitioned for inter partes
review, challenging all ’173 patent claims for anticipation
by both XNS and Harkins, and obviousness over Harkins
in view of Motoyama. The Board instituted on all assert-
ed grounds and construed several terms, including “Go
button,” “interfacing,” and “application.” MPHJ appeals
these constructions.
    The Board found claims 1–8 to be anticipated by both
XNS and Harkins. The Board also held claims 1–8 un-
patentable over the combination of Harkins and Motoya-
ma for obviousness. MPHJ appeals these determinations.
                       DISCUSSION
    “Under 28 U.S.C. § 1295(a)(4), we have jurisdiction to
review the Board’s final written decisions in IPRs.” Shaw
Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d
1293, 1297 (Fed. Cir. 2016). We review the Board’s factu-
al findings for substantial evidence and its legal conclu-
sions de novo. In re Gartside, 203 F.3d 1305, 1315–16
(Fed. Cir. 2000). “Substantial evidence is something less
than the weight of the evidence but more than a mere
MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.               7



scintilla of evidence.” In re Mouttet, 686 F.3d 1322, 1331
(Fed. Cir. 2012). It is “such relevant evidence as a rea-
sonable mind might accept as adequate to support a
conclusion.” In re Applied Materials, Inc., 692 F.3d 1289,
1294 (Fed. Cir. 2012) (quoting Consol. Edison Co. v.
NLRB, 305 U.S. 197, 229 (1938)).
                    A. Claim Construction
    When reviewing the Board’s claim construction, “[w]e
review underlying factual determinations concerning
extrinsic evidence for substantial evidence and the ulti-
mate construction of the claim de novo.” TriVascular, Inc.
v. Samuels, 812 F.3d 1056, 1061 (Fed. Cir. 2016) (quoting
In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1280
(Fed. Cir. 2015), aff’d sub nom., Cuozzo Speed Techs., LLC
v. Lee, 136 S. Ct. 2131 (2016)). “[C]laim construction in
IPRs is not governed by Phillips. Under Cuozzo, claims
are given their broadest reasonable interpretation con-
sistent with the specification, not necessarily the correct
construction under the framework laid out in Phillips.”
PPC Broadband, Inc. v. Corning Optical Commc’ns RF,
LLC, 815 F.3d 734, 742 (Fed. Cir. 2016) (citation omitted).
                        i. “Go Button”
    The term “Go button” is used in claim 1 of the ’173 pa-
tent and its dependent claims. The Board construed “Go
button” to mean “an operation that begins a process.” J.A.
12. MPHJ proposes adding the following language to the
Board’s construction: “and requires no further action from
the user to complete.” MPHJ Opening Br. at 18.
    MPHJ’s construction precludes manual or user inter-
vention to render a scanned document or to transmit it to
an external destination. Instead, both “rendering” and
transmission must take place in direct response to the
selection of the “Go button,” in a single step. Under
MPHJ’s construction, selecting the “Go button” must be
both necessary and sufficient to “render” the document to
8                  MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.



be copied, and rendering must take place before any
transmission of the document to an external destination.
    Relatedly, MPHJ argues that the Board erred in ap-
plying the “rendering” limitation of claim 1 which reads,
“at least one network addressable scanner, digital copier
or other multifunction peripheral capable of rendering at
least one of said electronic image, electronic graphics and
electronic document in response to a selection of a Go
button.” ’173 patent, col. 86, ll. 15–19 (emphases added).
According to MPHJ, the Board erred because, under its
interpretation, the scanner, copier, or other multifunc-
tional peripheral does not need to perform the “render-
ing”; instead, the “rendering” can take place as a result of
a “drag-and-drop” operation, requiring a second step.
MPHJ also argues that, under the Board’s interpretation,
transmitting the document can take place before render-
ing it.
    Appellees assert that, absent lexicography or disa-
vowal, we should not depart from the plain meaning of
the term “Go button.” See Thorner v. Sony Comput.
Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
“The standards for finding lexicography and disavowal
are exacting.” GE Lighting Sols., LLC v. AgiLight, Inc.,
750 F.3d 1304, 1309 (Fed. Cir. 2014). To act as a lexicog-
rapher, a patentee must “clearly set forth a definition of
the disputed claim term” and “clearly express an intent to
redefine the term.” Thorner, 669 F.3d at 1365 (internal
quotation marks omitted). Appellees also argue that
claim 1 merely requires a device “capable of rendering” a
document and does not require actual rendering. Appel-
lees contend that, even if “rendering” is limiting, claim 1
broadly requires both “rendering” and transmission in
response to the selection of the “Go button,” but does not
require the two actions to occur in a particular order or in
a single step.
MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.                  9



     Claim 1 requires “a selection of a Go button” and then
further specifies what happens in response to “the selec-
tion of said Go button”; in effect, claim 1 requires
(1) rendering an electronic document in response to a
selection of a “Go button,” and (2) integrating the elec-
tronic document so that it is replicated and transmitted to
an external destination in response to the same selection
of the “Go button.” Thus, the antecedent basis for “the
selection” requiring transmission is “a selection” requiring
rendering. While I agree with Appellees that the claims
do not appear to require a particular order between
“rendering” and transmission, that is where my agree-
ment with Appellees ends with respect to the claim terms.
    The central dispute over these terms is whether, re-
gardless of order, both “rendering” and “transmi[ssion]”
must take place (1) in a single step, and (2) without
manual intervention. The language of the ’173 patent
and the ’798 provisional application, incorporated by
reference into the ’173 patent, provides guidance on this
point. See Trs. of Columbia Univ. v. Symantec Corp., 811
F.3d 1359, 1365–66 (Fed. Cir. 2016) (using statements in
the provisional application to guide claim construction);
Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1383 (Fed. Cir.
2014) (same); Advanced Display Sys., Inc. v. Kent State
Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000) (explaining
that a provisional application incorporated by reference is
“effectively part of the host document as if it were explicit-
ly contained therein.”). The majority acknowledges that a
provisional application may contribute to understanding
the claims. Maj. Op. at 11.
    In explaining the function of the VC and “Go button”
in comparison to “other applications” in the prior art, the
’798 provisional application states:
    The IMAGinE Virtual Copier can copy paper from
    a physical device directly into a third-party soft-
    ware application in one step. Using other applica-
10                 MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.



     tions, such as Visioneer's Paperport or Xerox's
     Pagis, the user must first “import” or scan paper
     into the capture application and then drag or di-
     rect the output to another location. With the IM-
     AGinE Virtual Copier, a single button (the Go
     button) directly copies paper from a scan-like de-
     vice (either a copier with a scan attachment or a
     scanner) and places it within the third-party ap-
     plication. 1
J.A. 1819 (emphases added). The emphasized words
indicate that copying and transmission both take place in
response to only the selection of the “Go button.” Further,
this passage makes distinctions between “other applica-
tions” in the prior art requiring manual intervention and
the claimed VC. The ’798 provisional application addi-
tionally supports the single-step nature of the operation
by stating that the purpose of the patent “is to protect our
new ‘Go’ operation that designates a single-step copying
function for copying . . . between disparate digital imaging
devices.” J.A. 1818 (emphasis added). In addition, the
’798 provisional application describes the user’s experi-
ence as “Patent: The IMAGinE Virtual Copier Interface: A
Simple Method of . . . the Complex Operation of Copying
Files . . . in One Step.” J.A. 1820 (emphasis added).
    The ’173 patent specification reiterates this notion,
stating that the “VC extends the notion of a copier, which
simply replicates the image of an original document onto
another piece of paper using a single GO or START but-


     1  The ’798 provisional application also explains that
the “Go button” can be used to directly copy paper “from a
third-party application directly to a printer, and makes
sure that the image is translated into the proper format
(either Windows GOI or proprietary image language) for
outputting to a printer device (standard Windows printer
or specialty RIP printer).” J.A. 1819.
MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.                    11



ton, to do a similar operation in software so that the
image gets seamlessly replicated into other devices or
applications or the Internet.” ’173 patent, col. 46, ll. 36–
40 (emphases added). The ’173 specification also explains
that the VC “will accomplish all translations between
device and applications automatically and seamlessly.”
Id. col. 7, ll. 3–5; col. 47, ll. 1–3; col. 70, ll. 37–39 (empha-
sis added). The ’173 patent uses the terms “automatical-
ly” and “seamlessly” in describing the action of the VC
and “Go button” throughout the specification. In addition,
the ’173 patent explains that “[t]he virtual copy operation
can be cancelled prior to its completion by calling the
Cancel method.” Id. col. 78, ll. 58–63. The “Go button”
therefore triggers a process that is carried out to comple-
tion unless it is cancelled.
    I conclude that these statements collectively rise to
the level of clear and unmistakable disavowal of claim
scope. Disavowal requires that “the specification makes
clear that the invention does not include a particular
feature.” SciMed Life Sys., Inc. v. Advanced Cardiovascu-
lar Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001).
    In support of its construction, the majority argues
that the patentee “deleted” the single-step nature of the
operation from the ’173 patent. Maj. Op. at 11. I disagree
with this characterization. Not only does the ’173 patent
in fact make repeated references to a single-step opera-
tion, but the ’173 patent specification incorporates in full
the ’798 provisional application, including all of the
statements the patentee made about the single-step nature
of the VC invention. Despite the majority’s assertions to
the contrary, the incorporation of these statements is
significant for understanding the intended scope of the
claims. In fact, by incorporating the ’798 provisional
application, the patentee did the opposite of deleting any
references to a single-step operation.
12                 MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.



    The majority also contends that the ’173 patent’s use
of the term “optional” in two places in the specification,
when referring to the “single-step Go operation,” makes
irrelevant the clear indications in the ’798 provisional
application and in the ’173 patent that the patentee
intended to claim a single-step operation in which the
patentee has disavowed the use of manual intervention
between use of the “Go button” and the rendering and
transmission of a document to an external destination.
See Maj. Op. at 11. I disagree with the majority’s conclu-
sion. First, Appellees failed to brief the meaning of the
term “optional” in the ’173 patent, instead arguing gener-
ally that the ’798 provisional application and the ’173
patent merely describe some single-step embodiments,
and that MPHJ failed to point to any “language of exclu-
sion . . . to suggest that the patentee intended to preclude
multi-step rendering and transmitting in response to the
Go button.” Appellees Br. at 39–40. As I have explained
above, I disagree with Appellees’ argument on this issue
based on the clear language of the ’173 patent, including
the incorporated statements from the ’798 provisional
application. Second, it is not clear in either instance
whether the term “optional” is intended to modify “single-
step” rather than the “operation” itself. Read in the
context of the entirety of the specification, the more
logical conclusion is that the term “optional” modifies the
entire term “single-step operation,” meaning that imple-
menting the operation is optional, not that how the opera-
tion, once implemented, works is optional.            Third,
nowhere do the claims themselves use “optional” lan-
guage, or, indeed, any language inconsistent with the
conclusion that the patentee has disavowed manual
intervention. The majority further fails to explain how an
“optional” single-step Go operation comports with the
repeated references to the “seamless” and “automatic”
operation of the “Go button” in the ’173 patent.
MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.               13



    MPHJ explains correctly that the claim language re-
quires a “multifunction peripheral” to be “capable of
rendering” a document in response to the selection of the
“Go button.” Given that the ability to render must exist,
“rendering” cannot be read out of the claim just because
an actual rendering need not take place. In addition, both
parties agree that “rendering” and transmission to an
external destination must occur “in response” to the
selection of the “Go button.” For these reasons, I find that
the proper construction of “Go button” is “an operation
that begins a process and requires no further action from
the user to complete.” Claim 1 therefore excludes the use
of a “drag-and-drop” operation to complete the rendering
and transmission process.
                       ii. “Interfacing”
    MPHJ also argues that the Board misconstrued “in-
terfacing,” found in claims 4–8 of the ’173 patent. The
Board construed this term to mean “making a direct or
indirect connection between two elements so they can
work with each other or exchange information.” J.A. 15.
According to MPHJ, the Board erred because the broadest
reasonable interpretation of “interfacing” is “making a
direct or indirect connection between two elements so
they can directly work with each other or directly ex-
change information.” MPHJ Opening Br. at 9 (emphases
added).
    MPHJ asserts that the Board’s construction errone-
ously captures indirect communications between a scan-
ner and an email system comprised of the intervening
manual steps of accessing a previously-scanned document
and loading it into an email as an attachment. In sup-
port, MPHJ cites to the inter partes review oral hearing,
in which counsel for MPHJ recited the ’798 provisional
application’s statement that, “using other applications
such as Visioneer’s PaperPort or Xerox’s Pages, which are
prior art systems, the user must first import or scan
14                 MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.



paper into a capture application and then drag and direct
the output to another location.” J.A. 367, l. 25–J.A. 368, l.
4. In addition, MPHJ notes that the ’798 provisional
application provides an express definition of the VC
interface:
     The IMAGinE Virtual Copier Interface: A Simple
     Method of Presenting to a User the Complex Op-
     eration of Copying Files or Electronic Images to
     and from Digital Imaging Devices and/or Software
     Applications in One Step.
J.A. 1820 (emphases added).
     As with the “Go button” term discussed above, I con-
clude that MPHJ has met its burden to show prosecution
history disclaimer and lexicography as to this term.
When the specification distinguishes the prior art, the
invention should not be construed to encompass the prior
art features. See SciMed, 242 F.3d at 1341 (“Where the
specification makes clear that the invention does not
include a particular feature, that feature is deemed to be
outside the reach of the claims of the patent, even though
the language of the claims, read without reference to the
specification, might be considered broad enough to en-
compass the feature in question.”). Appellees’ only real
argument in response to MPHJ on this point is their
contention that MPHJ’s construction is improper because
it is not based on statements explicitly in the ’173 specifi-
cation. Because the ’798 provisional application was
incorporated in full into the ’173 specification, however,
this argument is unavailing.
    For these reasons, “interfacing” and “Go button”
should be construed consistently, such that, as to both
terms, MPHJ has disclaimed manual user intervention
and additional steps before a document is both rendered
and transmitted.
MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.                  15



                       iii. “Application”
     The terms “application” or “applications” appear in all
claims at issue. Claim 1 recites “implementing the plural-
ity of interface protocols as a software application for
interfacing and communicating with the plurality of
external destinations including the one or more of the
external devices and applications.” ’173 patent, col. 86,
ll. 23–27. The Board construed “application” as follows:
   [A] program, or group of programs, which operate
   together in a system to perform a function or func-
   tions, and the programs can be stored in a variety
   of places on a variety of devices, and operate in a
   distributed manner. An application may include
   software and hardware and performs a function or
   functions.
J.A. 10–11. MPHJ asserts that “application” should be
construed as “a discrete software program executable on
an operating system for the purpose of accomplishing a
task.” MPHJ Opening Br. at 31. In suggesting a narrow-
er construction than the construction adopted by the
Board, MPHJ contends that “applications” must be sepa-
rate and discrete.
    Appellees respond that MPHJ’s construction is not the
broadest reasonable interpretation of “application,” and I
agree. The specification offers several examples of an
“application,” including: “Lotus Notes, Microsoft Ex-
change, the Internet, or an electronic filing system.” ’173
patent, col. 6, ll. 61–63. Notably, the internet is not “a
discrete software program executable on an operating
system for the purpose of accomplishing a task.” In
context, this specification passage reads that:
   The power of Virtual Copier is the fact that the
   [source] can be a physical device . . . or an applica-
   tion (e.g. Lotus Notes, Microsoft Exchange, the In-
   ternet, or an electronic filing system).          The
16                  MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.



     [destination] can also be a physical device . . . or
     an application (e.g. Lotus Notes, Microsoft Ex-
     change, the Internet, or an electronic filing sys-
     tem).
Id. col. 6, ll. 60–66 (emphases added). Even the list of
potential sources of the document, not just the destina-
tions, includes the internet.
     Based on the plain language of the specification, I
concur with the majority that MPHJ’s proposed construc-
tion is improper. Appellees correctly note that MPHJ’s
construction also improperly excludes a distributed archi-
tecture. The ’173 patent teaches that the VC “engine
object layer and the engine may be optionally located in a
distributed environment on different machines, servers,
and the like.” Id. col. 67, ll. 62–64. The terms “distribut-
ed component interaction” and “distributed environment”
are used throughout the specification. See, e.g., id. col. 65,
l. 4; id. col. 66, ll. 13–14; id. col. 67, ll. 27–36. Adopting
MPHJ’s construction would exclude embodiments where
the VC application is distributed across various devices,
contrary to the language of the patent. MPHJ’s construc-
tion, requiring that an “application” be discrete, is also
contrary to its argument that the specification requires
different source and destination applications.
                      B. Anticipation
    “Anticipation under 35 U.S.C. § 102 is a question of
fact, while obviousness under § 103 is a question of law
based on underlying findings of fact.” Kennametal, Inc. v.
Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir.
2015). What the prior art discloses is a factual inquiry.
Para-Ordnance Mfg., Inc. v. SGS Imps. Int’l, Inc., 73 F.3d
1085, 1088 (Fed. Cir. 1995). Where our claim construc-
tion differs from that of the Board, we determine ques-
tions of anticipation and obviousness under our claim
construction. See, e.g., In re Man Mach. Interface Techs.
LLC, 822 F.3d 1282, 1287–89 (Fed. Cir. 2016).
MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.               17



                   i. Anticipation by XNS 2
             a. XNS Anticipates Claims 1–3
    The Board found that XNS anticipated claims 1–3 be-
cause XNS teaches a “‘Go button’ or START button of GIS
150 [that] can initiate a scan in one step and send a
document via email in another.” J.A. 24–25. MPHJ
claims that, under its construction of “Go button,” render-
ing and transmission must be performed in response to
the same selection of the “Go button.” XNS does not
disclose this concept, according to MPHJ. Appellees
assert that the Board correctly found that XNS discloses
that the GIS 150 scanner has a “START button” that is
capable of scanning a document and sending it to a file
service for storage, or a printer service for printing.
    There is no dispute that XNS discloses document dis-
tribution by email after a rendering step. Additionally, I
conclude that both rendering and transmission to a file
server take place in response to a single selection of a “Go
button” in XNS.
    MPHJ does not really dispute these conclusions. In-
stead, MPHJ argues that, even if XNS discloses use of a
single-step process for sending a document to a file service
or printer service, it does not anticipate claim 1 because
XNS employs a second step with manual intervention to
access email as an external source.




   2     As a threshold issue, the Board held that XNS
and GIS 150 constituted an “application” under its broad
construction. As I would affirm the Board’s construction
of “application,” and MPHJ does not dispute that XNS
(including GIS 150) meets the “application” limitation
under the Board’s construction, I would affirm the Board
in this respect.
18                 MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.



    A system practicing claim 1 must have an external
destination that may be “email application software.”
Based on claim 1’s clause, “wherein one of said plurality
of interface protocols is employed when one of said exter-
nal destinations is email application software,” MPHJ
asserts that email must be a possible external destina-
tion. Otherwise, MPHJ claims that the Board would be
reading that “wherein” language out of the claim.
    The Board did not expressly resolve whether email
application software is a required destination because it
determined that claim 1 does not even require a single
step. Appellees contend that claim 1 does not require the
external destination to be email application software,
because the language to which MPHJ points is merely
conditional: “when one of said external destinations is
email application software.” ’173 patent, col. 86, ll. 28–30
(emphasis added). Appellees therefore assert that this
“wherein” clause is a conditional, non-limiting, non-
specific clause that does not narrow the claim. Under this
reasoning, Appellees assert that MPHJ’s anticipation
argument fails even if MPHJ is correct in asserting that
claim 1 requires a single-step operation. Appellees are
correct on this point.
     “As a matter of linguistic precision, optional elements
do not narrow the claim because they can always be
omitted.” In re Johnston, 435 F.3d 1381, 1384 (Fed. Cir.
2006). The determination of whether a “wherein” clause
imposes a limitation in a claim must be determined on a
case-by-case basis. See, e.g., Griffin v. Bertina, 285 F.3d
1029, 1033–34 (Fed. Cir. 2002) (finding that a “wherein”
clause limited a claim where the clause gave “meaning
and purpose to the manipulative steps” of the claim); Tex.
Instruments Inc. v. ITC, 988 F.2d 1165, 1172 (Fed. Cir.
1993) (holding that “[a] ‘whereby’ clause that merely
states the result of the limitations in the claim adds
nothing to the patentability or substance of the claim.”
(citation omitted)).
MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.              19



    MPHJ fails to meet its burden on this issue. First,
MPHJ asserts that the ’798 provisional application sup-
ports the position that email application software is a
required external destination: “a single button (the Go
button) directly copies paper from a scan-like device
(either a copier with a scan attachment or a scanner) and
places it within the third-party application.” J.A. 1819.
This statement notably does not reference email applica-
tion software, and email application software is not men-
tioned elsewhere in the ’798 provisional application.
There is no indication that the “wherein” clause limits
this claim by stating a restriction that was “an integral
part of the invention” based on the specification and
prosecution history. See, e.g., Hoffer v. Microsoft Corp.,
405 F.3d 1326, 1330 (Fed. Cir. 2005) (per curiam).
    Furthermore, the “wherein” limitation at issue is con-
ditional; it explains that a specific protocol is used when
one of said external destinations is email application
software. Under the broadest reasonable interpretation of
claim 1, the limitations in the “wherein” clause would not
apply because email application software is not required
to be the external destination in all embodiments.
     Thus, I would find that rendering and transmission to
a file server do take place in response to the selection of
the “Go button” in XNS, and that email application soft-
ware is not a required external destination in claim 1. I
would therefore affirm the Board’s finding that XNS
anticipates claim 1 and its dependent claims.
         b. XNS Does Not Anticipate Claims 4–8
    Unlike claim 1, claim 4 does not recite a “Go button”
and the “interfacing” limitation of claim 4 requires inter-
facing between a “multifunction peripheral and email
application software.” The Board found MPHJ’s argu-
ment, that XNS does not disclose the “interfacing” limita-
tion because the GIS 150 scanner does not “interface”
with email application software, to be unpersuasive.
20                 MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.



    XNS does not teach interfacing the GIS 150 scanner
with the separate email system described in the XNS
architecture. Instead, the GIS 150 scanner can only
communicate a scanned document to a file server or a
print server. As XNS does not teach single-step interfac-
ing between the GIS 150 scanner and the separate email
system of XNS, I would find that XNS does not meet the
“interfacing” limitation, and therefore, does not anticipate
claims 4–8 of the ’173 patent.
              ii. Anticipation under Harkins
       a. Harkins Does Not Anticipate Claims 1–3
    The Board held that the Harkins user interface dis-
closes the “Go button” of claim 1 because it allows a user
to select a document to scan. The Board also held that
“rendering” and “transmitting” can occur separately, and
the claim language did not preclude rendering from
beginning with a “drag-and-drop” step, such as that
disclosed in Harkins.
    According to MPHJ, the Board found anticipation of
claim 1 by Harkins because its construction of “Go button”
and understanding of “rendering” did not preclude a
manual step of digitally moving documents residing in a
repository, even though the repository is “unrelated to the
scanner/copier.” MPHJ disputes this finding, because it is
not consistent with MPHJ’s narrower proposed claim
construction. Under MPHJ’s construction, MPHJ asserts
that the multifunction peripheral cannot be both the
device that renders the document and the device that
receives a transmitted document.
    Appellees respond that Harkins anticipates the ’173
patent even under MPHJ’s construction of “Go button,”
because the “drag-and-drop” operation of Harkins initi-
ates the process of transmitting the document to the
recipient associated with the communication channel.
Harkins, col. 10, ll. 56–59. When the document arrives,
MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.              21



Appellees assert that it is rendered according to the
recipient’s profile without requiring further action from
either the sender or the recipient. Id. col. 10, ll. 37–47
(explicitly teaching that a profile describes the form and
service “documents should take to be rendered”). Appel-
lees argue that Harkins’s “drag-and-drop” operation
requires no further action from the user to both transmit
and render.
    The “capable of rendering” limitation of claim 1 re-
quires “at least one network addressable scanner, digital
copier or other multifunctional peripheral capable of
rendering” a document. ’173 patent, col. 86, ll. 15–16
(emphasis added). Claim 1 requires that “a plurality of
said external destinations is in communication with said
at least one network addressable scanner, digital copier or
other multifunction peripheral over a local area network.”
Id. col. 86, ll. 34–37 (emphases added). The external
destination must receive the document after transmission
over a communication network. Id. col. 86, ll. 44–50.
     Appellees argue that the ’173 patent uses a fax ma-
chine as an example of a multifunction peripheral, and
therefore Harkins anticipates because it teaches that a
user may invoke the “drag-and-drop” operation to trans-
mit and automatically render the document according to
the user’s pre-established profile, using a fax machine.
Harkins, fig. 28 (“MULTI-FUNCTIONAL PERIPHERAL
(i.e. FAX)”).
    The language of claim 1 requires that an external des-
tination is in communication with a multifunction periph-
eral over a local area network. Appellees’ argument
therefore fails because the language of the claim makes
clear that a single fax machine cannot be both the device
that renders the document and the external destination
device that receives a transmitted document.
   The ’173 patent teaches a “Go button” that renders
and transmits a document to an external destination in a
22                 MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.



single step, without the need for manual intervention
such as the “drag-and-drop” taught in Harkins. Harkins
therefore does not anticipate the “Go button” limitation of
claim 1 and its dependent claims.
       b. Harkins Does Not Anticipate Claims 4–8
    With respect to claim 4, the Board rejected MPHJ’s
argument that the scanner and email application are not
“interfacing” in Harkins, because Harkins teaches that
scanned documents are stored in an intermediary location
before they are emailed.
    MPHJ argues that Harkins does not satisfy the “inter-
facing” limitation of claim 4 and its dependent claims
because Harkins teaches moving previously-scanned
documents using simple operations, not interfacing a
scanner to email application software. MPHJ asserts that
the language of the ’798 provisional application essential-
ly requires more than permitting a user to “drag-and-
drop” a previously scanned document to a new location.
    Appellees assert that Harkins discloses “interfacing”
because the user can interact with the Harkins UI to
automatically distribute a document over the network,
including email. There is no dispute that one of the
destinations available to the user in the “drag-and-drop”
operation of Harkins is “electronic mail.” Rather, Appel-
lees argue that the Harkins “drag-and-drop” operation is
actually itself a single step that results in both the “ren-
dering” and transmission of a digital scan to an external
destination.
    The “interfacing” limitation at issue reads “interfacing
between . . . [a] multifunction peripheral and email appli-
cation software using a first of said interface protocols.”
’173 patent, col. 87, ll. 27–29 (emphasis added). The use
of the word “between” in this limitation strongly suggests
that the “multifunction peripheral” cannot also be the
“email application software,” given that there is no indica-
MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.                23



tion that either of these entities can interface with itself.
Because “multifunction peripheral” and “email application
software” must be distinct, I conclude that Harkins does
not anticipate claim 4. Though Harkins discloses a single
“drag-and-drop” operation, as discussed above, this opera-
tion need not result in both “rendering” and transmission.
    Because Harkins does not meet the “interfacing” limi-
tation of claim 4, I would reverse the Board’s finding of
anticipation of claims 1–8 under Harkins.
   c. Obviousness in Light of Harkins and Motoyama
    The Board found claims 1–8 to be obvious in light of
Harkins in view of Motoyama. On appeal, MPHJ chal-
lenges the Board’s application of its claim construction
and anticipation findings to its obviousness determina-
tion.
    The petition used Motoyama solely to address the
storage of protocols in memory:
    Motoyama explicitly discloses a database storing a
    plurality of communication protocols used for
    communicating with a variety of networked ma-
    chines. It would have been obvious to a [person of
    ordinary skill] at the time of the invention to in-
    clude the database storing a plurality of commu-
    nication protocols disclosed by Motoyama in the
    “multimedia device information system or net-
    work” disclosed by Harkins.
J.A. 195. Motoyama does not teach concepts, such as a
form of “Go button” or “interfacing,” that would be im-
pacted by reversal of the Board’s claim construction
rulings on these terms. Obviousness, therefore, is de-
pendent on agreement with the Board’s decision that
Harkins anticipates the challenged claims.        Because
Harkins does not anticipate claims 1–8 of the ’173 patent,
I would reverse the Board’s finding of obviousness.
24                MPHJ TECH. INVS.   v. RICOH AMERICAS CORP.



                      CONCLUSION
    I conclude that the Board misconstrued the terms “Go
button” and “interfacing” by finding that those terms
encompassed the use of manual intervention to render
and transmit a scanned document. But I concur with the
majority that the Board properly construed “application.”
Under these constructions, XNS does anticipate claims 1–
3 of the ’173 patent, but does not anticipate claims 4–8.
As Harkins does not anticipate claims 1–8 of the ’173
patent, I would reverse the Board’s obviousness determi-
nation. I would therefore affirm in part and reverse in
part the Board’s judgment in this IPR.
