MPHJ Tech. Invs. v. Ricoh Ams. Corp., (Fed. Cir. Feb. 13, 2017) (Before Newman, Lourie, and O’Malley, J.) (Opinion for the court, Newman, J.) (Concurring in part, dissenting in part, O’Malley, J.)
The Federal Circuit upheld the decision of the Patent Trial and Appeal Board (“Board”), on Inter Partes Review, to invalidate as anticipated or obvious all claims of a patent owned by MPHJ Technology Investments. MPHJ’s patent describes a system and method for scanning a physical document and “replicat[ing it] into other devices or applications or the internet,” for instance, by email.
The Board found all claims of the patent to be anticipated by a Xerox manual, anticipated by a Xerox patent and/or obvious in view of the Xerox patent and a second patent. On appeal, MPHJ argued that the Board erred in construing the claims too broadly and that the correct, narrower construction would leave the claims free of the prior art.
According to MPHJ, the patent claims require “direct single-step transfer from the scanner or other peripheral device, to email or the Internet or other destination.” MPHJ argued that the prior art did not accomplish this functionality in a single step. In response, the Board “held that the specification and claims do not require only a single-step operation.”
Before the Court, MPHJ argued that statements in the provisional application “‘expressly limited the scope of the invention’ to a one-step copying and sending process.” These statements are not recited in the issued nonprovisional patent. The Court agreed “that a provisional application can contribute to understanding the claims,” but said that, “[i]n this case, it is the deletion from the . . . [p]rovisional application that contributes understanding of the intended scope of the final application.” The Court also pointed out that the issued patent “describes the single-step operation as ‘optional.’” Accordingly, the Court affirmed the Board’s claim construction.
Thus, the Board correctly construed the claims as not limited to a single-step operation, and its finding of anticipation was supported by substantial evidence. The Court declined to evaluate the Board’s alternative ruling of obviousness.
Judge O’Malley concurred in part and dissented in part. She agreed that the three system claims were anticipated but thought the five method claims were not. The Xerox manual teaches a scanner in communication with a file server or print server and not a single-step interface between a scanner and an email system. She also found that the Xerox patent teaches moving previously scanned documents and not interfacing a scanner to email application software, whereas MPHJ’s method claims require “interfacing between . . . a multifunction peripheral and email application software.” (emphasis in original). In his view, the Xerox documents did not each provide all of the claimed method steps and did not anticipate the claims.
Disclosures in a provisional application that are not carried forward in a subsequent regular application may be treated as a surrender of the deleted subject matter, for example when construing the scope of affected claim language.