Another Patent Invalidated by Inter Partes Review and BRI Standard

Stephen G. Adrian | February 27, 2017

MPHJ Technology Investments, LLC v. Ricoh Americas Corporation, XEROX Corporation, Lexmark International, Inc.

February 13, 2017.

Before Newman, Laurie and O’Malley.  Opinion by Newman

Summary

This decision is another example of a patent being invalidated by prior art in an inter partes review based upon the broadest reasonable interpretation (BRI) standard. Interestingly, MPHJ had argued that a narrower interpretation should have been employed based upon the description in its provisional application. Although a provisional application can contribute to understanding the claims, the CAFC found that the non-provisional application had deleted the more limiting language which was in the provisional application. As such, the CAFC affirmed the PTAB’s claim construction, which resulted in affirmance of anticipation by the prior art.

Discussion

The Patent Trial and Appeal Board (PTAB) found claims 1-8 of U.S. Patent No. 8,488,173 invalid as anticipated or obvious. The ‘173 patent is directed to 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 copied to a device at another location.”

“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.”

Claims 1 and 4 are representative:

 1.  A system capable of transmitting at least one of an electronic image, electronic graphics and electronic document to a plurality of external destinations including one or more of external devices, local files and applications responsively connectable to at least one communication network, comprising:

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;

at least one memory storing a plurality of interface protocols for interfacing and communicating;

at least one processor responsively connectable to said at least one memory, and implementing the plurality 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,

wherein one of said plurality of interface protocols is employed when one of said external destinations is email application software;

wherein a second of said plurality of interface protocols 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 multifunction 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 transmission over the at least one communication network;

a printer other than said at least one network addressable scanner, digital copier or other multifunction peripheral;

wherein, in response to the selection of said Go button, an electronic document management system integrates at least one of said electronic image, electronic graphics and electronic document using software so that said electronic image, electronic 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, electronic graphics and electronic document is processed by said at least one network addressable scanner, digital copier or other multifunction peripheral into a file format, and wherein a plurality of said external destinations are compatible with said file format without having to modify said external destinations; and

wherein upon said replication and seamless transmission to at least one of said external destinations, 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.

4.  A method of managing at least one of an electronic image, electronic graphics or electronic document comprising the steps of, in any order:

(a) transmitting a plurality of any of said electronic image, electronic graphics or electronic document from a source address to a plurality of external destinations including one or more of external devices, local files and applications responsive to said source address using at least one communication network;

(b) rendering said plurality of any of said electronic image, electronic graphics or electronic document 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 application-level interface protocols;

(d) interfacing between at least one of said scanner, digital copier or other multifunction peripheral and email application software using a first of said interface protocols;

(e) interfacing between at least one of said scanner, digital copier or other multifunction peripheral and a local file using a second of said interface protocols;

(f) communicating over a local area network between 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 multifunction 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 interface protocols;

(h) integrating via at least one processor communicatively coupled with said at least one of said scanner, digital copier or other multifunction peripheral, a second electronic image, electronic graphics or electronic document so that said second electronic image, electronic graphics or electronic document gets seamlessly replicated and 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 destinations; 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 destinations.

It was MPHJ’s position that the claimed “seamless” transmission of claim 1 requires “a one-step operation without human intervention, and that this system is not shown in the art.” With respect to claim 4, MPHJ argued that the interfacing of step (d) means that the operation occurs in a single step. As such, MPHJ argued that the PTAB erred in its claim construction. On the other hand, the PTAB pointed out that the specification and claims do not require only a single-step operation.

In support of its position, MPHJ pointed to statements in its provisional application as expressly limiting the scope of the claims. However, these statements were omitted from the non-provisional application. The non-provisional application describes the single-step operation as optional. Accordingly, the CAFC believed that the inventor intended that the single-step operation be optional, not obligatory. Based on this construction, the cited art would be considered to anticipate the claims. The question of obviousness was not addressed due to the finding of anticipation.

O’Malley presented an opinion concurring in part and dissenting in part. O’Malley believed that the PTAB misconstrued the terms “Go button” and “interfacing” to permit use of manual intervention to render and transmit a document. Under a claim construction with this interpretation, she would affirm the anticipation rejection of claims 1-3 and reverse the finding that claims 4-8 are anticipated.

Judge O’Malley points out: Claim 1 requires “a selection of a Go button” and then further specifies what happens in response to “the selection 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 electronic 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. O’Malley then relied on statements in both the provisional application and the non-provisional application emphasizing that copying and transmission takes place in a single step. Furthermore, the non-provisional application incorporated by reference the provisional application, and therefore did the opposite of deleting any single-step operation.

In regard to “interfacing”, O’Malley believes that the PTAB erred because the broadest reasonable interpretation is “making a direct or indirect connection between two elements so that they can directly work with each other or directly exchange information.”

O’Malley believes that the record shows that MPHJ met its burden to show prosecution history disclaimer and lexicography. Furthermore, when the specification distinguishes the prior art, the invention should not be construed to encompass the prior art features. The non-provisional specification made statements regarding distinctions between other applications in the prior art requiring manual intervention and the claimed virtual copier. Accordingly, “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.

Based on this claim construction, the prior art document XNS would anticipate claims 1-3 because rendering and transmission occurs in response to a single selection of a Go button, which was not disputed by MPHJ. Claim 4 does not require a Go button, but instead requires interfacing, which is not considered to be taught by the prior art.

Take away

A provisional application can be used to help understand the meaning of claim terms. As found by the majority, changes between the provisional application and the non-provisional can have a negative impact, particularly if a narrow construction is intended. Although an applicant may desire the broadest claim scope as is permissible, care should be taken that the proper meaning is clearly conveyed.

While it is common practice to incorporate the contents of a prior application by reference, this case illustrates that an unintended broader interpretation can result.

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