Federal Court Shoots Down All But One of 15 MPHJ Technology Scan Patents Challenged by HP

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Top MPHJ Technology attorney Jay Mac Rust, from 2006 magazine cover of Super Lawyers Texas “Rising Stars.”

Top MPHJ Technology attorney Jay Mac Rust, from 2006 magazine cover of Super Lawyers Texas “Rising Stars.”

HP has managed to shoot-down all but one of 15 scan patents asserted by MPHJ Technology, with Law360 reporting that on September 13th, the U.S. Federal Circuit upheld a U.S. Patent Trial and Appeal Board (PTAB) decision invalidating all but one of MPHJ Technology Investments’s 15 scanning patents that the Hewlett-Packard Company had challenged.

According to Law360:

“The PTAB’s 2014 final decision in an America Invents Act inter partes review held that HP had shown that 14 of the patent’s 15 claims were invalid as anticipated, but that one other is not invalid. MPHJ, which one member of Congress once called ‘a quintessential patent troll,; did not appeal the decision, but HP did, and the Federal Circuit shot down its bid to invalidate the remaining claim.”

HP has essentially argued that MPHJ’s scan patents covered technology that previously existed, was “obvious,” and had actually been used in HP scanners and multifunctional printers – a concept referred to as prior art, that is, in order for a patent to be valid, there must be no other prior existence of the invention or technology.

The Federal Circuit also ruled that the PTAB decisions can’t appealed.

HP’s lawyers stated to the Federal Circuit that MPHJ had sent letters to 16,465 small business across the country accusing them of infringing upon MPHJ’s patent by using printers and scanners that allow users to scan a document and send it to an email address as a PDF. The letters then demanded that the businesses pay MPHJ $1,000 per employee to license the technology

The PTAB found that most of MPHJ’s scan patents were in use prior to MPHJ patenting them, as demonstrated, for instance, in an HP press release that described the HP’s ScanJet 5.

In May 2013, Hewlett-Packard Company filed a petition with the PTAB seeking to invalidate several of the patents MPHJ claims cover an MFP or scanner’s scan capability. HP argued that the patents are invalid because two HP products introduced in the 1990s – the ScanJet 5 (1995) and LaserJet 3100 (1997) – actually predate approval of the patents filed by inventor Laurence Klein, qualifying the products as prior art under 35 U.S.C. § 102(b).

The case is HP Inc. v. MPHJ Technology Investments in the U.S. Court of Appeals for the Federal Circuit.

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