Ricoh, Xerox, Lexmark File Petition with U.S. Patent Office to Invalidate MPHJ’s Scan-Patent Claims

jay mac rust

Jay Mac Rust, chief litigator of MPHJ Technology Investments.

Ricoh Americas, Xerox, and Lexmark International today filed two petitions for Inter Partes Review of U.S. Patent No. 8,488,173, and certain claims of U.S. Patent No. 7,477,410 at the United States Patent & Trademark Office (USPTO). The new actions are being filed jointly by all three companies in a continuing effort to protect Ricoh, Xerox, and Lexmark customers and dealers against the assertion of these patents by MPHJ Technology Investments LLC and its numerous law firms.

MPHJ Technology Investments is perhaps one of the nation’s most notorious “patent trolls.” Its law firms have sent out thousands of demand letters, primarily to small companies, stating that if they didn’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 the claims are un-patentable and were fully anticipated by various prior art references. MPHJ is owned by Texas lawyer Jay Mac Rust, pictured above.

This is the second in series of actions that the companies have undertaken to fight MPHJ. In May 2013, Ricoh and Xerox filed action to nullify U.S. Patent No. 7,986,426 and help disable MPHJ’s licensing campaign against its customers. See here for more.

MPHJ’s business practices are currently under investigation or have previously been investigated by the United States Federal Trade Commission (FTC) as well as the by the attorneys general of Minnesota, Nebraska, New York, and Vermont. The FTC has contended that if any U.S. patent owner threatens suit for patent infringement, even against a single patent-infringer, and then fails to promptly bring suit for infringement, then that U.S. patent owner has committed an unfair trade practice under Section 5 of the FTC Act, unless the patent owner bears the burden and can prove that at the time the threat was made, it intended to bring suit. MPHJ has disputed this, and late last year, filed suit against the FTC, alleging that the  FTC overstepped its bounds when it threatened a lawsuit against MPHJ. See here for more. However, it was only in November 2013 that MPHJ actually brought a lawsuit against a company (Research Now)

In a joint statement, Lexmark, Ricoh, and Xerox stated: “Ricoh, Xerox and Lexmark have clear positions on the protection of intellectual property. We feel strongly that the infringement claims are without merit and the licensing demands of MPHJ are unsubstantiated. We feel it is important to take this action to support our customers and dealer networks from these frivolous claims.”

The three companies also state that they will continue to monitor MPHJ’s licensing efforts and will update their customers and authorized dealer networks with any further developments regarding the USPTO’s Review.

Other imaging imaging companies have also been working to combat MPHJ’s licensing activities. In June 2013, Canon U.S.A. reported that it had worked out an agreement with MPHJ that shields Canon customers from MPHJ patent-infringement lawsuits. In May 2013, Hewlett-Packard filed a petition with the United States Patent & Trade Office to invalidate several of the patents MPHJ claims cover an MFP or scanner’s scan-to-email capability. HP stated that the patents are invalid because two of its products introduced in the 1990s – the ScanJet 5 (1995) and LaserJet 3100 (1997) – actually predate approval of the patents filed by inventor Laurence Klein. If this is the case, these products would qualify as prior art under 35 U.S.C. § 102(b), or in other words, in order for a patent to be valid, there must be no other prior existence of the invention or technology.


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