Scan-to-Email Patent Finally Done; Claim Scope Broadened by Narrow Provisional Application

MPHJ Tech v. Ricoh (Fed. Cir. 2017)[16-1243-opinion-2-9-2017-11]

MPHJ’s patent enforcement campaign helped revive calls for further reform of the patent litigation system.  The patentee apparently mailed out thousands of demand letters to both small and large businesses who it suspected of infringing its scan-to-email patents.  The primary patent at issue is U.S. Patent No. 8,488,173.

Ricoh, Xerox, and Lexmark successfully petitioned for inter partes review (IPR), and the PTAB concluded that the challenged claims (1–8) are invalid as both anticipated and obvious.[1] On appeal, the Federal Circuit has affirmed.

Claim 1 is a fairly long sentence – 410 words, but basically requires a scanner with the ability to both store a local file and also email a file that can be operated with a “go button” followed by “seamless” transmission.  The patent itself is based upon a complex family of 15+ prior US filings, most of which have been abandoned, with the earliest priority filing of October 1996.

Although more than 20 years ago, there was prior art even back then.  However, the identified prior art process was apparently not entirely “seamless” in operation. On appeal, the patentee asked for a narrowing construction of the claim scope to require “a one-step operation without human intervention.”  Unfortunately for MPHJ, the claims are not so clear.

Relying upon the Provisional to Interpret the Claims: Attempting to narrow the claim scope, MPHJ pointed to one of the referenced provisional applications that disclosed a “one step” process requiring the user to simply push “a single button”  On appeal, the Federal Circuit agreed that the provisional is relevant, but not how MPHJ hoped. Rather, the court found that the fact MPHJ omitted those limiting statements when it drafted the non-provisional serves as a suggestion that the claims were not intended to be limited either.

We agree that a provisional application can contribute to understanding the claims.[2] . . . In this case, it is the deletion from the ’798 Provisional application that contributes understanding of the intended scope of the final application. . . . We conclude that a person of skill in this field would deem the removal of these limiting clauses to be significant. The [challenged] Patent in its final form contains no statement or suggestion of an intent to limit the claims to the deleted one-step operation. Neither the specification nor the claims state that this limited scope is the only intended scope. Instead, the ’173 Patent describes the single step operation as “optional.” . . . A person skilled in this field would reasonably conclude that the inventor intended that single-step operation would be optional, not obligatory.

MPHJ’s efforts really should be written up as a case-study.  Unfortunate for patentees that this is the case members of the public will continue to hear about for years to come.

For patent prosecutors.  Here we have another example of how a low-quality provisional filing failed the patentee.  Now, you have to recognize that changes you make when filing the non-provisional will be used against you in the claim construction process.  While there may be ways to use this strategically, I expect that more patentees will be trapped than benefited.

 

 

 

= = = = =

[1] Ricoh Ams. Corp. v. MPHJ Tech. Invs., No. IPR2014-00538, 2015 WL 4911675, (P.T.A.B. Aug. 12, 2015).

[2] See Trs. of Columbia Univ. in New York v. Symantec Corp., 811 F.3d 1359, 1365 (Fed. Cir. 2016) (looking to the provisional application for guidance as to claim construction); Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1383 (Fed. Cir. 2014) (same).

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

24 thoughts on “Scan-to-Email Patent Finally Done; Claim Scope Broadened by Narrow Provisional Application

  1. I think we should have a contest to determine the silliest poorly defined terms to ever show up in a “do it on a computer” claim.

    “Seamless” has got to be right up there.

    Reply
  2. I think the CAFC needs to come to terms with the fact that applicants can’t have their cake and eat it, too.

    If you file a provisional, then later you amend the specification to change the scope of some term in your provisional but also “incorporate” the earlier version reference, when that term ends up being relevant to claim construction then it’s time to simply flush the application/patent down the toilet. Indefinite. Done. Have a nice day.

    Reply
  3. Am I missing something? It appears the provisional was incorporated by reference into the patent. If so, wouldn’t all the teachings of that provisional be included in the child non-provisional? How can the Court say the patentee did not contemplate the narrower invention if it was in effect disclosed? The patentee did not throw away the narrower interpretation, it was in the provisional.

    Reply
    1. How can the Court say the patentee did not contemplate the narrower invention if it was in effect disclosed

      I don’t think the CAFC is saying that the patentee “didn’t contemplate the narrower invention.”

      The CAFC simply construed a claim term to encompass not only the narrower embodiment contemplated by the inventor, but also other embodiments that were plainly contemplated by the inventor.

      The patentee did not throw away the narrower interpretation

      Right. The patentee expressly described that embodiment it as “an option.” That’s the interpretation they got stuck with it, and justifiably so.

      Reply
  4. The author’s conclusion that the Provisional is poor and is the problem is clearly wrong. The problem is that the non-Prov should have included ALL of the Prov, even if merely as an embodiment.

    Reply
    1. The problem is that the non-Prov should have included ALL of the Prov, even if merely as an embodiment.

      That may be true in this instance.

      But it’s not always true. For example, if an experiment/example in the provisional turns out to be b0 gus for whatever reason (e.g., a non-working embodiment) and the applicant is aware of this by the time you convert, probably best to edit it out and take some pre-emptive steps to minimize the damage (if any).

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    2. Technically it did. It incorporate the entire provisional by reference. The dissent focused heavily on this when it concluded that the claim construction was incorrect.

      Reply
  5. Dennis, if the critical limitation is in the provision and not in the non provisional, it was the poor quality drafting of the non provisional that was the cause of the problem.

    Here, it appears, the one step operation was made optional, while in the provisional, it was the feature.

    Reply
    1. I haven’t read this case, but from my brief review, at some level you can characterize it as a claim issue, right? Wouldn’t you rather have a nonprovisional disclosure that supports both implementations? My understanding is that the nonprovisional disclosure would have been perfectly fine if the one step operation was explicitly claimed. To me, this seems like an interesting example of why it isn’t always best to try to grab the broadest claim scope you can convince a patent examiner to allow. Or, at least, why it can be helpful to have narrower dependent claims as a fallback position.

      As a caveat, if it was indeed a “critical” feature (that is a really loaded term), then maybe it should have been emphasized more in the nonprovisional, but in general I think most practitioners would rather disclose broadly and claim narrowly, as opposed to disclosing narrowly and relying on narrowing comments from the spec to be imported into the claims.

      Reply
  6. “While there may be ways to use this strategically, I expect that more patentees will be trapped than benefited.”

    They won’t be “trapped” if they’re actually clear in their claim language that finally issues.

    Reply
  7. Looks to me like this is not the fault of a bad provisional, but rather just a non-provisional that probably should of had a dependent claim that recited the “one step” elements. Their attempt to limit the claim would have meant that it was required vis-à-vis Phillips. But, they should be allowed to amend at the IPR stage.

    Reply
    1. Agree that it seems at first glance like a dependent claim would have been helpful.

      Reply
  8. Although more than 20 years ago, there was prior art even back then.

    It really is amazing: information being sent from one machine to another … all with the push of a button! Even as far back as 1996!

    I remember back in 1992 when I wanted to send an email to my thesis advisor I would need to open up the back of the Magic Box, wake up the cute little elf who lived there, and give him a cookie. Then he’d read the message on the screen, spread his cute wings, and fly over to the recipient’s Magic Box where he’d draw the letters on the recipient’s display. It was a real pain in the behind.

    Elves, of course, despise the smell of toner which is why it was unthinkable to use them with a printer/scanner. We relied on the invisible space aliens for printing/scanning but union rules at the time wouldn’t allow them to respond to single button input.

    Reply
    1. It wasn’t much before 1996 that there was no easy way to attach an image to an email. One had find a “UU encoder” that could handle the image format and manually “UU encode” the image and paste the encoded image as a long string of text. The recipient had to find the appropriate UU decoder then UU decode the text…

      So, you know…

      Reply
      1. It wasn’t much before 1996 that there was no easy way to attach an image to an email. One had find a “UU encoder” that could handle the image format and manually “UU encode” the image and paste the encoded image as a long string of text. The recipient had to find the appropriate UU decoder then UU decode the text…

        The last time I checked our patent system makes a rather huge distinction between “no way” and “a way”, regardless of whether that “way” was “easy” or not. For example, when determining whether you are entitled to a patent on “attaching an image to an email” what matters is whether there was an existing “way” that worked, period. Was it “hard”? Irrelevant.

        And the thing about machines that carry out logic operations is that you can always “automate” those operations so “less buttons.” That automation will limit flexibility but that doesn’t make the automation any less obvious. Logic is like that. When you “automate” logic processing, it becomes “automatic.” Surprised? Certain patent attorneys always seem to be but nobody else is.

        Reply
        1. “The last time I checked our patent system makes a rather huge distinction between “no way” and “a way”, regardless of whether that “way” was “easy” or not. For example, when determining whether you are entitled to a patent on “attaching an image to an email” what matters is whether there was an existing “way” that worked, period. Was it “hard”? Irrelevant.”

          What are you smoking? There was “a way” to pick nits out of cotton before Mr. Whitney made some suggestions. He got a patent for it.

          There was “a way” to fly before the Wright Bros too….. if you were a bird.

          Reply
          1. There was “a way” to pick nits out of cotton before Mr. Whitney made some suggestions. He got a patent for it.

            What is this “it” you refer to?

            As I recall, Mr. Whitney got a patent for a limited and particular “way”. He didn’t get a patent that broadly covered “ways to pick nits” or “ways to pick nits automatically” or “nit picking with a machine.”

            But maybe I’m misremembering. You sounds like you’re some sort of expert on cotton gins and airplanes. And light bulbs, too, no doubt. Or maybe you’re just reciting from a script …

            Reply
            1. Stay on topic. Remember, the nonsense you blurted was:
              “For example, when determining whether you are entitled to a patent on “attaching an image to an email” what matters is whether there was an existing “way” that worked, period. Was it “hard”? Irrelevant.”

              Reply

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