Big Win for Lexmark, Ricoh, Xerox, as Patent Board Finds Eight of MPHJ’s Scan Patents Unpatentable

jay mac rust

Texas lawyer Jay Mac Rust, lead attorney for MPHJ Technology Investments.

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.

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