HP Seeks to Have Memjet Page-Wide Printing Patent Claims Reviewed by U.S. Patent & Trade Office
RT Recycling Times reports that HP Inc. has moved to delay rival Memjet’s patent-infringement lawsuit before the U.S. District Court of Southern California by seeking to have Memjet’s patent claims reviewed by the United States Patent & Trademark Office’s Patent Trial and Appeal Board.
HP has filed an inter partes review (IPR), which is a procedure for challenging the validity of a U.S. patent before the United States Patent and Trademark Office (USPTO). The procedure is conducted by the USPTO Patent Trial and Appeal Board (PTAB). HP filed for a delay – or stay – to halt further legal process, as it seeks to challenge the validity of Memjet’s patents, under the sections of the U.S. Code on conditions for patentability, including novelty, non-obviousness, and prior art (prior existence of claimed patents).
RT Media says it obtained a copy of HP’s motion, which requests that the matter be heard on, or after April 18th.
Memjet filed a patent-infringement lawsuit against HP back in August 2015, claiming that the technology used in HP’s PageWide color inkjet printers – which has been deployed in HP Officejets, new PageWide enterprise-office printers, and HP commercial printers – infringed on eight Memjet patents. In November 2015, a German court ruled that HP PageWide XL Printers violated Memjet patents and banned PageWide XL Printers, but early this year, HP had that ban overturned. HP also counter-sued Memjet in October 2015.
In its motion, HP says it filed the first four of its petitions, and will file the remaining four petitions within the next month, and that it anticipates that its review before the USPTO will cancel most if not all of Memjet’s patent-infringment claims.
p style=”text-align: justify;”>HP asserts prior art or obviousness arguments that it says the USPTO didn’t consider in granting Memjet its patents:
- 9,056,475 (“the ‘475 patent”), asserting two prior art references: (1) U.S. Patent No. 4,947,190 to Mizusawa and (2) U.S. Patent No. 6,382,850 to Freund.
- 7,156,492 (“the ‘492 patent”), asserting three prior art references: (1) U.S. Patent No. 5,565,900 to Cowger; (2) WO 01/02172 A1 to Silverbrook; and (3) U.S. Patent No. 6,428,142 to Silverbrook.
- 6,575,549 (“the ‘549 patent”), asserting three prior art references: (1) WO 97/31781 to Adler; (2) JPH10-006488; and (3) U.S. Patent No. 6,439,681 to McClellan.
- 6,880,914 (“the ‘914 patent”), asserting five prior art references: (1) WO 00/54973 to Silverbrook; (2) Australian Provisional Patent Application Nos. PQ4559 and PQ5959; (3) U.S. Patent No. 4,692,778 to Yoshimura; (4) U.S. Patent No. 4,559,543 to Toganoh; and (5) U.S. Patent No. 4.477,823 to Matsufuji.
The asserted claims of U.S. Patent Nos. ‘986, ‘636,‘096 and ‘550 are not included in the first four IPR petitions, but according to RT Recylcing Times, the memorandum shows HP will continue to file IPR petitions challenging the validity of all asserted claims of the remaining four Memjet asserted patents.
- February 2016: German Court Lifts Injunction Barring HP from Selling PageWide XL Printers in Germany
- November 2015: German Court Rules HP Wide-Format PageWide XL Printers Infringe on Memjet Patent
- August 2015: Memjet Files Patent-Infringement Lawsuit Against HP, Claims HP Infringed on Page-Wide Printing Patents