Big Win for Lexmark, Ricoh, Xerox, as Patent Board Finds Eight of MPHJ’s Scan Patents Unpatentable
In what appears to be a major win for Lexmark, Ricoh, and Xerox against “patent troll” MPHJ Technology Investments, Law360 reports that the three companies have persuaded the U.S. Patent Trial and Appeal Board that MPHJ’s patent for document scanning are unpatentable, with the board ruling on August 19th that eight of MPHJ’s scan patents are unpatentable.
Lawyers for MPHJ were unable to persuade the board that its patent didn’t just combine decades-old technology that had already been in use, according to a decision handed down by the Patent Trial and Appeals Board.
According to the decision, two older office-equipment inventions (Motoyama and Harkins) covered the same ground in MPHJ’s claimed scan technology, with the board noting “that it would be obvious to anyone skilled in the field that combining those inventions is a logical next step.”
“We also agree that the field of endeavor, communicating with, and monitoring, diagnosis and control of machines using multiple communication protocol of Motoyama is sufficiently similar to the office-document storage and transmission system of Harkins that the person of ordinary skill would combine Motoyama with Harkins to ‘yield predictable results,’” the board wrote in its decision.
The board found claims 1-8 of the patent, U.S. Patent Number 8,488,173, unpatentable, according to the decision.
Back in March 2014, Lexmark, Ricoh, and Xerox sought review of the patents owned by MPHJ. The three companies argued that MPHJ’s patents claimed nothing more than a “well-known concept” for allowing PC users to add electronic paper processing to their existing business process, according to their petitions.
The Patent Trial and Appeals Board ruled that MPHJ’s patent claims were anticipated by a 1995 Xerox information manual and a 1996 information distribution patent
In the last several years, MPHJ has sent numerous demand letters to various small businesses, claiming that the companies’ MPFs’ scan capability infringed upon its patents, and demanding $1,000 per user for the violations. MPHJ has been accused of being a non-practicing patent holder, although it has filed lawsuits against Coca-Cola and Dillards, neither of which have been resolved
The cases are Ricoh Americas Corp. et al v. MPHJ Technology Corp., case numbers IPR2014-00538 and IPR2014-00539, at the Patent Trial and Appeal Board of the USPTO.
- June 2015: Lexmark, Ricoh, Xerox ‘Blast’ MPHJ’s Claimed Scan Patents Before U.S. Patent & Trademark Office
- September 2014: Judge Dismisses MPHJ Technology’s Lawsuit Against Federal Trade Commission
- August 2014: Vermont AG Suit against ‘Patent Troll’ MPHJ Technology to Proceed
- November 2014: FTC: MPHJ Can Continue to Send Demand Letters for Use of Scan Patents
- March 2014: Ricoh, Xerox, Lexmark File Petition with U.S. Patent Office to Invalidate MPHJ’s Scan-Patent Claims
- January 2014: Judge: MPHJ Technology can Continue Sending Cease-and-Desist Scan-Patent Enforcement Letters
- January 2014: MPHJ Technology Files Scan-Patent Infringement Lawsuits against Four Companies, Including Coca-Cola and Dillard’s
- November 2013: MPHJ Sues First Company over Alleged Scan-to-email Patent Violations
- August 2013: In a First, MPHJ Technology Agrees to Stop Scan to eMail ‘Patent Trolling’ in a U.S. State
- June 2013: Canon Works Out Agreement with MPHJ to Shield Canon Customers from Scan to email Patent-Infringement Lawsuits
- May 2013: MPHJ Lawyers Defend Scan to Email Lawsuits: “We’re Not Trying to Harass People”
- May 2013: HP Joins the Fray Against MPHJ Technology, Says its Own Products Pre-Date Scan Patents