Lexmark, Ricoh and Xerox Corp Slam Scanner ‘Patent Troll’ IP Review

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Lexmark, Ricoh and Xerox Corp Slam Scanner ‘Patent Troll’ IP Review

 news 2015-06-02 at 11:58:29 am Views: 177
  • #42675

    Lexmark, Ricoh and Xerox Corp  Slam Scanner ‘Patent Troll’ IP Review
    Xerox, Others Slam Scanner ‘Patent Troll’ IP In PTAB Review
     By Michael Macagnone.

    Law360, Washington (May 27, 2015, 2:45 PM ET) — Lexmark Corp., Ricoh Americas Corp. and Xerox Corp. blasted a nonpracticing entity for offering a "nonsensical" defense of two document-scanning patents during a Patent Trial and Appeals Board hearing Wednesday, maintaining the claimed inventions just combine decades-old prior art.

    The decision in Wednesday’s case should build on a PTAB decision last year that invalidated another MPHJ Technology Investments LLC scanning patent, according to Xerox. Xerox said MPHJ, designated a “patent troll” by Vermont’s Attorney General, has not offered enough evidence to distinguish the instant claims from the prior, invalidated, patent.

    “You have a blueprint here for a decision in these two cases based on what you have decided before,” said Michael Specht, attorney for the petitioners.

    Specht said both patents, 8,488,173 and 7,477,410, are anticipated by a 1995 Xerox information manual and a 1996 information distribution patent, and obvious over both that patent and a separate computer communication patent.

    “All of the claims are clearly unpatentable, and the record speaks for itself,” Specht said.

    According to the PTAB, the ‘173 and ‘410 patents cover a system that allows a computer to scan paper from a device, and copy an electronic version of it to another remote device. Both patents are continuations of patents for which the PTAB has already instituted inter partes review, the panel said.

    Vivek Ganti, counsel for MPHJ, said the ‘173 patent offers several unique features not covered by prior art, specifically a one-step scan process and a scan-to-email feature. Ganti said Wednesday the 1995 Xerox manual did not anticipate its ‘173 patent, pointing out that it failed to disclose the details of an “actual working product.”

    “There is no ‘scan to email’ anywhere in [the Xerox manual] and I challenge petitioners to point to it,” Ganti said.

    The prior art had separate steps for both of those claimed features, Ganti said, or did not have the scan-to-email feature at all. The information distribution patent, Ganti said, did not have the email feature.

    “Post-processing of scanned documents does not infer the use of scan-to-email,” Ganti said.

    However, Ganti faced questions on those points from the panel judges, including PTAB Judge Karl Easthom.

    Pointing to portions of the Xerox manual that mention sending files to designated places, including email applications, Judge Easthom asked, “It seems like this is saying that the document can be scanned to email, are you saying this says something different?”

    “Yes, I’m saying it says something different,” Ganti said.

    Ganti said Xerox only cited one scanner in the manual, which explicitly did not have email functionality.

    Both the ‘410 and ‘173 patents are involved in slew of infringement actions, including suits against Coca-Cola Co. and Dillards Inc., according to court documents. MPHJ filed those suits in January 2014, alleging in the Coca-Cola suit that the beverage company's information technology system allows its nearly 150,000 employees to use scanners in a way that infringes the patents.

    The proceedings against Coca-Cola have been administratively closed pending the resolution of the instant challenge, according to court documents.

    Previously, the company focused its efforts on demand letters, often seeking $1,000 per employee from small companies and nonprofits. In November, the company entered into an agreement with the Federal Trade Commission to stop “deceptive sales claims and phony legal threats” related to licensing claims for multiple patents, including the ‘410 patent.

    The patents-in-suit are U.S. Patent Numbers 8,488,173 and 7,477,410.

    PTAB Judges Michael Tierney, Karl Easthom and Gregg Anderson sat on the panel.

    The petitioners are represented by Michael D. Specht and Richard M. Bemben of Sterne Kessler Goldstein & Fox PLLC.

    MPHJ is represented by Steve Hill and Vivek A. Ganti of Hill Kertcher & Wharton LLP.

    The cases are Ricoh Americas Corp. et al v. MPHJ Technology Corp., case numbers IPR2014-00538 and IPR2014-00539, at the Patent Trial and Appeal Board of the USPTO.

    –Editing by Rebecca Flanagan.