Lexmark, Ricoh, Xerox ‘Blast’ MPHJ’s Claimed Scan Patents Before U.S. Patent & Trademark Office

jay mac rust

Jay Mac Rust, lead attorney for MPHJ Technology Investments.

Law360 reports that Lexmark International, Ricoh Americas, and Xerox “blasted” MPHJ Technology Investment, a non-practicing patent-holder, for offering a “nonsensical” defense of two document-scanning patents during a patent trial and appeals board hearing late last month before the United States Patent and Trademark Office (USPTO), arguing that the technology behind the document-scanning patents held by MPHJ Technology “just combine decades-old prior art.” The term prior art in general refers to something that has been in general existence and use, is not the property of any entity, and thus cannot be patented.

The case is Ricoh Americas Corp. et al v. MPHJ Technology Corporation. Back in March 2014, Ricoh Americas, Xerox, and Lexmark International filed two petitions for Inter Partes Review of the MPHJ scan patents (U.S. Patent No. 8,488,173, and certain claims of U.S. Patent No. 7,477,410) at the USPTO. The actions were filed jointly by the three companies in a continuing effort to protect the firms against the assertion of these patents by MPHJ Technology Investments LLC and its numerous law firms.

Over the last several years, MPHJ Technology Investments and law firms representing it have sent out thousands of demand letters, primarily to small companies, stating that if they don’t pay a patent-licensing fee of $1,000 per worker for using their MFPs’ scan-to-email function, they will be sued for patent infringement.

As part of the Inter Partes Review Petition, Ricoh, Xerox and Lexmark are seeking a ruling from the USPTO that MPHJ’s scan-patent claims are un-patentable and were fully anticipated by various prior art references.

According to Xerox, the decision in this case should build on a U.S. Patent Trade and Appeals Board decision last year that invalidated another MPHJ Technology Investments scanning patent. According to Xerox. Xerox said MPHJ, designated a “patent troll” by Vermont’s Attorney General, has not offered enough evidence to distinguish its claims from a prior, invalidated scan patent.

Xerox attorney Michael Specht said both patents, ‘173 and ‘410, are anticipated by a 1995 Xerox information manual and by 1996 information distribution.

“All of the claims are clearly unpatentable, and the record speaks for itself,” Specht said.

According to the PTAB, 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.

MPHJ Technology Defense

MPHJ counsel Vivek Ganti countered that the ‘173 patent provides “several unique features” not covered by prior art – specifically a one-step scan process, and a scan-to-email feature. Ganti also denied that the 1995 Xerox manual anticipated MPHJ’s ‘173 patent, arguing that it failed to disclose the details of an “actual working product.”

“There is no ‘scan to email’ anywhere in [the Xerox manual] and I challenge petitioners to point to it,” Ganti argued.

The prior art had separate steps for both of those claimed features, Ganti said, or did not have the scan-to-email feature at all. The information distribution patent, Ganti said, didn’t have the email feature.

“Post-processing of scanned documents does not infer the use of scan-to-email,” Ganti said.

According to Law360:

“However, Ganti faced questions on those points from the panel judges, including PTAB Judge Karl Easthom.

Pointing to portions of the Xerox manual that mention sending files to designated places, including email applications, Judge Easthom asked, ‘It seems like this is saying that the document can be scanned to email, are you saying this says something different?’

‘Yes, I’m saying it says something different,’ Ganti said.

Ganti said Xerox only cited one scanner in the manual, which explicitly did not have email functionality.”

In November 2014, MPHJ entered into an agreement with the Federal Trade Commission to stop “deceptive sales claims and phony legal threats” regarding its enforcement of its scan patents. MPHJ’s scan-patent infringements lawsuits against several large companies, including Coca-Cola and Dillards, are still ongoing.

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