U.S. Patent Office to Review ‘Patentability’ of MPHJ Technology’s Scan Patents
In a win for three copier companies, Law360 reports that the U.S. Patent and Trademark Office’s trial board will review two controversial scan patents owned by MPHJ Technology Investments after requests from Xerox, Ricoh Americas, and Lexmark International, which have argued that the two patents are nothing more than a “well-known concept” for allowing PC users to add electronic paper processing to their existing business process.
The U.S. Patent Office ruled last week that there was a reasonable chance that the patents – U.S. Patent Numbers 8,488,173 and 7,477,410 – might be found “unpatentable,” and that there was a “reasonable likelihood” that Xerox, Ricoh, and Lexmark would prevail in their unpatentability arguments.The office ruled that the patents might have been anticipated by a 1995 Xerox manual and a 1996 information distribution patent.
In its petition, Xerox stated: “At least a decade before the alleged effective filing date of the ’410 patent, Xerox was already publicly using the disclosed and claimed technology. Many others since 1985 have also utilized this simple technology.”
In May 2013, Hewlett-Packard also filed a petition with the U.S. Patent Office to invalidate MPHJ’s two scan patents, arguing that its own technology predates MPHJ’s registration of the patents. The U.S. Patent Office has not yet ruled on HP’s petition.
The ‘173 and ‘410 patents cover a system that allows a computer to scan paper from a device, and copy an electronic version of it to another remote device.
For its part, in July 2013, attorneys for MPHJ argue that the 1985 Xerox manual didn’t anticipate the 2013 patent, pointing out that it failed to disclose the details of an “actual software application.”
In the last several years, MPHJ attorneys have has sent out hundreds of demand letters, mainly to small businesses, typically demanding $1,000 per employee for use of a company MFP’s scanning capability. The demand letters typically demand companies pay MPHJ $1,000 per employee for use of MFPs’ scanning capability, or face patent-infringement litigation from MPHJ. MPHJ has sued Coca-Cola and Dillard’s for alleged violation of the scan patents.
In another recent development, a U.S. Federal Circuit judge dismissed MPHJ’s appeal not to have a case brought by the Vermont Attorney General. That case, which alleges that MPHJ’s activity violates state consumer-protection laws, will now be heard in the Vermont court.