Appeals Court Rules Against MPHJ Technology, Affirms MPHJ Scan Patents Un-Patentable

Attorney Jay Mac Rust, chief litigator of MPHJ Technology Investments.

In good news for Lexmark International, Ricoh Americas, and Xerox, yesterday, the U.S. Court of Appeals for the Federal Circuit Court ruled against notorious “patent troll” MPHJ Technology Investments. MPHJ had appealed an earlier decision that invalidated several of its scan patents. The appeals case is MPHJ Technology Investments, LLC, Appellant v. Ricoh Americas Corporation, Xerox Corporation, Lexmark International.

In 2015, Lexmark International, Ricoh Americas, and Xerox had petitioned the U.S. Patent Trial and Appeal Board, arguing that MPHJ’s scan patents are un-patentable, as the technology had been in use by MFPs marketed by the three companies before the patents had been issued to MPHJ, thus making the MPHJ patents invalid. In August 2015, the U.S. Patent Trial and Appeal Board (PTAB) ruled that several ofMPHJ’s patents for document scanning are un-patentable, with the board ruling on August 19, 2015 that eight of MPHJ’s scan patents are un-patentable. MPHJ lawyers were unable to persuade the board that its patents didn’t just combine decades-old technology that had already been in use. The board found that claims 1-8 of the patent, U.S. Patent Number 8,488,173, un-patentable.

In the decision handed down yesterday, the court upheld the U.S. Patent Trial and Appeal Board’s decision.

The court wrote:

“The challengers, Ricoh Americas Corporation, Xerox Corporation, and Lexmark International, Inc. (collectively, “Petitioner”), requested Inter Partes Review of claims 1–8, all of the ’173 Patent claims, in accordance with 35 U.S.C. § 311 et seq. The PTAB instituted review, construed the claims, conducted a hearing, and held the claims unpatentable based on several prior art references.
The PTAB found claims 1–8 anticipated by the Xerox Network Systems Architecture General Information Manual dated April 1985 (“XNS”) and the XNS features in Xerox 150 Graphic Input Station Operator and Reference Manual dated January 1985 (“GIS 150”). The PTAB also found claims 1–8 anticipated by U.S. Patent No. 5,513,126 to Harkins, and/or obvious in view of the combination of Harkins and U.S. Patent No. 5,818,603 to Motoyama. On this appeal MPHJ argues that the Board incorrectly broadly construed the claims and that on the correct narrow claim construction the claims are neither anticipated nor obvious.”

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