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Xerox, Lexmark And Ricoh Beat IP 'Patent Troll' Claims
By Kat GreeneLaw360, Los Angeles (August 13, 2015, 9:44 PM ET) — Xerox Corp., Lexmark Corp. and Ricoh Americas Corp. won their bid to undo a so-called patent troll's patent for document scanning Wednesday when the Patent Trial and Appeals Board ruled eight of the invention’s claims unpatentable.
Nonpracticing entity MPHJ Technology Investments LLC, once called a “patent troll” by Vermont’s attorney general, was unable to persuade the board that the claims in its patent didn’t just combine decades-old prior art, according to a decision handed down by PTAB.
The board found that two older office-equipment inventions known as Motoyama and Harkins covered the same ground in MPHJ’s claimed technology and that it would be obvious to anyone skilled in the field that combining those inventions is a logical next step, according to the decision.
“We also agree that the field of endeavor, communicating with, and monitoring, diagnosis and control of machines using multiple communication protocol of Motoyama is sufficiently similar to the office document storage and transmission system of Harkins that the person of ordinary skill would combine Motoyama with Harkins to ‘yield predictable results,’” the board wrote in its decision.
The board found claims 1-8 of the patent, U.S. Patent Number 8,488,173, unpatentable, according to the decision.
The companies filed a petition in March 2014 seeking inter partes review of the patent owned by MPHJ, arguing that MPHJ’s patents claimed nothing more than a “well-known concept” for allowing PC users to add electronic paper processing to their existing business process, according to the petitions.
In granting review, the panel specifically ruled that the challenged claims might be shown to be anticipated by 1995 Xerox information manual and a 1996 information distribution patent and obvious over that patent and a separate computer communication patent.
MPHJ's licensing demands, including those related to the patent challenged by Ricoh and Xerox, attracted the attention of of Vermont Attorney General Bill Sorrell, who ended up suing the company for violating the state's consumer protection laws.
The company's demand letters, which often sought $1,000 per employee from small companies and nonprofits, threatened patent infringement litigation with no independent evidence that the recipients, small companies unlikely to have the resources to fight the suit, were actually infringing, Sorrell said when he filed suit.
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 several of its patents.
The ‘173 patent and several others held by MPHJ were involved in a 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.
Representatives for the parties didn’t immediately respond to requests for comment on Thursday.
The patent-in-suit is U.S. Patent Number 8,488,173.
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 Kertscher & 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.
–Additional reporting by Michael Macagnone, Ryan Davis and Allissa Wickham. Editing by Christine Chun.
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