HP v. MPHJ (Fed. Cir. 2016)
Over the past few years, MPHJ has raised the ire of many with its enforcement campaign of U.S. Patent No. 6,771,381. The claims seemingly cover HP’s multi-function scanner-printers that can be configured to email the scanned documents. However, rather than suing HP for infringement, MPHJ sent letters to tens of thousands of businesses who HP printers seeking royalties. A number of states took direct action against MPHJ, including Vermont and Nebraska.
HP’s response to this was to file an inter partes review proceeding challenging all 15 claims of the ‘381 patent. IPR2013-00309. The PTAB largely sided with HP – finding 14 of the claims unpatentable, but confirmed the patentability of claim 13. HP appealed on claim 13, but the Federal Circuit has affirmed the Board ruling.
HP challenged claim 13 on both obviousness and anticipation grounds. However, the Board refused to institute review on the obviousness grounds — seeing that ground a ‘redundant’ to the two counts of anticipation. The unique aspect of claim 13 is that it requires a “list of available module means for maintaining a registry” (e.g., “input, output, and process modules”). This list was not found in either of the two separate anticipation references (Cotte or SJ5) as such, the Board found no anticipation.
As a question of fact, an anticipation conclusion by the Board is given substantial deference on appeal and will be affirmed if “a reasonable mind might accept the evidence presented as sufficient to support the finding.” Here, the appellate panel agreed that at least some evidence supported the conclusion that the element was missing from the prior art since HP was “unable to specify” how the required list was disclosed in the prior art.
HP also challenged the Board’s refusal to institute on obviousness grounds and its failure to explain its redundancy conclusion. On appeal, the Federal Circuit refused to address that issue — finding that appellate review of the institution decision is barred by statute.
Allowing an APA challenge to the Board’s decision to institute on the basis that the Board had insufficiently articulated its reasoning would eviscerate § 314(d) by allowing substantive review of the institution decision. Although there is a strong presumption of judicial review of administrative action, that presumption may be overcome where “there is persuasive reason to believe that such was the purpose of Congress.” Bowen v. Mich. Acad. of Family Physicians, 476 U.S. 667 (1986). Congress, through § 314(d), has explicitly stated that the Board’s institution decision “shall be final and nonappealable.” Thus, that specific statutory language precludes our review.
It is unclear to me at this point whether Claim 13 is valuable – i.e., do the current HP models infringe? I guess that we’ll see.
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MPHJ’s case against Vermont is still pending before the U.S. Supreme Court.
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The court here did not address how HP had standing to appeal, from the briefs neither party addressed that issue as well.
Is the claim language really the issue here? No one wants to comment on the outrageousness of the ruling that 103 is redundant in view of the 102s?
102 redundant in view of 103, maybe. But, NOT the other way around! If the “Board” doesn’t understand THAT, how can it be trusted to make rulings on anything patent related?!?
Les, all this shows is that one should be careful in one’s petition. If 102 is demonstrably clear, go for it. If not, simply go for 103.
On the facts, it is hard to even imagine how this IPR was instituted in the first place on 102 grounds over references that plainly did not show all the elements. Was the PTAB asleep at the switch?
Ned – perhaps more careful (MUCH more careful) than previously thought – see the thread on the Hricil side of the blog with BOTH parties put “under the g u n.”
anon, I am not quite certain how the present case folds into that discussion, but is it something along this line:
Pet. alleges X reference anticipates. Its petition reads the claims on the prior art. There is no issue of claim construction raised by the patent owner in its preliminary response. Going with the petitioner’s claim construction, the PTAB first institutes and then rules that the references does not anticipate in a final written decision. How can this be?
There was a mistake somewhere by the PTAB in its institution decision? Either that, or the petition’s read on the prior art was somehow dishonest. (Again, I assume here no issue of claim construction.)
If the PTAB were a court of law, I would sanction the petitioners for out and out lying to the court to the extent the PTAB relied on specific allegations of fact that turned out to be not true. Then I would ask them to pay, in addition to the court fines, damages to the patent owner.
Finally, I would turn any affiants over to the authorities for criminal prosecution.
honestly. anon, petitioners really have to separate factual allegations from argument. I cannot see or even begin to understand how the PTAB can institute based on anticipation and then in its FWD find no anticipation without the petitioner having misrepresented the facts, again, assuming no claim construction dispute.
specifically:
link to patentlyo.com
I don’t have one of them fancy lawyer jobs, but out here in the cotton fields if 14 of your 15 claims are anticipated, it’s a pretty safe bet to say the last one is obvious.
Question – has anyone ever raised the argument that the invalidity of the other claims is something to consider in giving the presumption of validity to the last one?
Good question. But even if the IPR elimination of all the other claims of a patent can be presented to a jury, will that impress a jury nearly as much as it would a patent attorney? Or would the fact that Uncle Sam did NOT kill the one claim in suit be more impressive to a jury?
A second IPR for the 103 issue the PTAB refused to decide, if possible, would seem a lot safer and cheaper?
Sure it would, but if they refused to decide 103 on Claim 13 the first time what makes you think they’ll decide the issue the second time?
I could have really lit into Random and his glib “Fancy Lawyer job comment” and did not.
Yet the following was censored:
April 6, 2016 at 6:14 am
“Question – has anyone ever raised the argument that the invalidity of the other claims is something to consider in giving the presumption of validity to the last one?”
To which I replied:
By law, each claim stands on its own, expressly unaffected by the fa te of the other claims.
Unless it was just “fa te” not allowed to be a single word….?
By law, each claim stands on its own, expressly unaffected by the fa te of the other claims.
Each claim stands on its own does not mean each claim is unconnected. Hypothetically, if the office said “The sole reason I’m allowing this is Fact A” and then it turns out Fact A is not true, the presumption is lost. Not applicable here, but the easiest example is that the office finds dependent Claim 2 is non-obvious because parent Claim 1 is amended to include a non-obvious feature later found to be obvious. Claim 2 loses its presumption even absent a specific argument to Claim 2’s subject matter once Claim 1 becomes invalid as obvious.
If HP itself was not sued on the patent then there is no one year IPR time deadline running against HP. The Fed. Cir. has held that manufacturer/sellers are not in IPR “privy” with their customers. Given the recent Fed. Cir. decision that issues which the PTAB refuses to take to trial in an IPR are not subject to estoppel, why could not HP file another IPR on a 103 basis combining that prior art with other prior art providing the missing claim elements for claim 13?
As for HP standing at the Fed. Cir., would not HP have that from all the infringement threats to many of its customers for using HP products which undoubtedly created customer dissatisfaction and complaints to HP? “Scan a document and attach to email” is a normal and common use of HP MFPs, especially now that FAX usage is becoming obsolete.
I never understood how “estoppel” with regards to filing another IPR would ever realistically apply to anyone. Just get the hobo off the street to file an IPR and drop the refs you’re introducing.
” Just get the hobo off the street to file an IPR and drop the refs you’re introducing.”
That might have worked for some early ex parte reexaminations, since the “hobo” does not need to, and cannot, do any more than file the initial paper in a reexamination and there is no estoppel or one year bar.
It will not work for an IPR petitioner, which, to be successful also requires professional preparation of declarations and claim charts and active participation in the inter partes IPR trial. More importantly, if anyone subject to IPR estoppel sets up a “straw man” to file a second IPR for them that makes them a “real party in interest”, and if they get caught violating that mandatory disclosure, by the subsequent cross-examination of witnesses, discovery, discovery in the parallel patent ligitation, or otherwise, they and their attorneys would be subject to severe sanctions and disciplinary actions, especially if it was a fraudulent attempt to avoid statutory IPR estoppel or the IPR time deadline.
Paul, “The Fed. Cir. has held that manufacturer/sellers are not in IPR “privy” with their customers.”
Where in the world did you get that?
MCM proved HP was in privity with Pandigital, its supplier. Under the law, HP is bound by the results of a patent lawsuit against Pandigital after notice. We cited Federal Circuit cases directly on point. Also see FRCP Rule 25(c) and the cases is in support of that rule. Briefly, privies (transferee’s of interest) do not have to be joined because they are automatically bound by judgments against their privies.
The PTAB held that we had not proved privity for 315(b) “purposes” because we had not proved HP control of the Pandigital lawsuit. We filed for mandamus. It was denied by the Federal Circuit after the government argued that we argue our position on appeal. When we did, the government intervened and asked the Federal Circuit to not consider our appeal because it was an institution decision that could not be appealed. We said OK, then. Consider this a mandamus petition.
Based upon Achates, the Federal Circuit simply did not consider the merits of the appeal in its decision.
We are not done, Paul. We are taking this issue to the Supreme Court.
Ned,
It will not be “pertinent” to Paul until after it happens.
He just does not like to discuss ANY thing that just might rain on his anti-patent IPR parade.
anon, Paul is becoming so predictable that if I want to know what the likes of IBM thinks, I simply have read Paul’s posts.
Dennis: It is unclear to me at this point whether Claim 13 is valuable – i.e., do the current HP models infringe? I guess that we’ll see.
Why in the world would HP challenge the claim if the was not arguably infringed? I would use the IPR itself as evidence against them if they began to deny infringement.
I think HP is going to lose this one big time. While it the opinion states that HP can file a new IPR on obviousness, they may be time-barred under 315(b).
Because MPHJ wasn’t suing HP. They were suing, or threatening to sue, numerous businesses that were too small to reasonably mount a legal defense, with the intention of collecting a cash settlement quickly and cheaply. The actual content of the claims doesn’t really matter when the target can’t afford to defend against them. So, the only way to put this to bed was to invalidate every claim in the patent.
Since HP wasn’t being sued, they presumably wouldn’t be time-barred under 315(b).
HP is a privy of the sued. 315(b) applies.
It is a travesty that humans are forced to share the earth with this incredible jxnk.
Who’s the third grader who wrote this?
13. A computer data management system including a server module comprising …
maintain list of available module means for maintaining a registry containing a list of said input, output, and process modules that can be used in said computer data management system, said list being read on startup …
Got that? Let’s set aside the jacked up syntax of “a system that comprises maintain” and look at what just what is being maintained: “a list … of means for maintaining a registry containing a list.” Then the same clause refers to “said list”, as if there’s only list involved.
Probably somewhere the same brilliant scrivener is working on another set of claims reciting “maintaining a list of means for maintining the list of means that maintains the registry of the list …”
Good grief.
MM, while I agree there are two “lists” discussed, the reader would think that “said list” refers to the list of available module means.
A court can construe the language to eliminate the ambiguity.
I think there is more to MM’s jacked up syntax. The form is: “Apparatus comprising: enable…; maintain…; maintain…; and maintain…. “ This is a mixture of an apparatus with the steps of a process. Now: “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112, second paragraph.” IPXL Holdings v. Amazon.com, Inc., 430 F.2d 1377, 1384. (Credit to Patent Prospector.) In IPXL, the use step was a few words embedded in much more apparatus, but the principal should be the same.
It looks like “enable” and “maintain” are nonce words so that the four steps are converted to means for modules and thus the claim is definite.
It seems like whoever drafted this thought they had to label each of their “means”:
13. A computer data management system including a server module comprising: enable virtual copy operation means for initiating, canceling, and resetting said computer data management system; maintain list of available module means for maintaining a registry containing a list of said input, output, and process modules that can be used in said computer data management system, said list being read on startup, and maintaining another copy of said list in a modules object accessible by said input, output, client, process and server modules; maintain currently active modules means for maintaining said input, output, and process modules currently being used for a current computer data management system copy operation in a program object, and saving the currently active modules in a process template file; and maintain complete document information means for maintaining information regarding a current file being copied, and saving the information in a document template file.
If you ignore whatever is before the “means for”, it becomes much more readable. At the time (1999), maybe that’s what this person thought they had to do.
MM: “maintain list of available module means for maintaining a registry containing a list of said input, output, and process modules that can be used in said computer data management system, said list being read on startup …
Got that? Let’s set aside the jacked up syntax of “a system that comprises maintain” ”
If you dial back the eye rolling and treat that language as intended, “maintain list of available module ” is the name of the means. It does not recite a second list. It could be replaced with a lest descriptive “first” or perhaps “list maintenance module” and be more readable, but it does not confuse one of ordinary skill in the art of reading into being unsure about to what “said list” is referring .
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