Ricoh Americas Corporation and Xerox Corporation v. MPHJ Technology Investments, LLC, IPR2013-00302: Final Written Decision IPR2013-00302
Wednesday, December 3, 2014

Takeaway: A patent owner’s demand letter, while not necessary to a claim construction holding, may serve to corroborate the claim construction arrived at by the Board.

In its Final Written Decision, the Board found that challenged claims 1–5 and 7–11 of the ’426 patent are unpatentable. At the same time, the Board concluded that Petitioner had not demonstrated by a preponderance of the evidence that dependent claim 6 is unpatentable.  Also, the Board dismissed as moot Patent Owner’s Motion to Exclude the testimony on re-direct of Petitioner’s expert Dr. Melen.

Petitioner had requested inter partes review of claims 1–11 of the ’426 patent, which relates to a “Virtual Copier” (VC) system that “enables a user to scan paper from a first device and copy an electronic version of it to another remote device, or integrate that electronic version with a computer application in the network.”  The VC, as described, is made up of input, output, process, client, and server modules, which the ’426 patent refers to as “essential modules.”

Petitioner relied upon three prior art references, namely, Salgado (U.S. Patent No. 5,872,569), the XNS Manual, and the GIS 150 Manual. Petitioner asserted that claims 1-11 were anticipated by the XNS Manual under 35 U.S.C. § 102(b) and by Salgado under 35 U.S.C. § 102(e).  Petitioner relied upon the GIS 150 Manual as evidence to show inherent features of the scanner referenced in the XNS Manual, which reliance the Board found to be proper.

In its claim construction analysis, the Board interpreted recited terminology including “at least one (of),” “software application,” and “module.” After noting that Patent Owner had acknowledged during oral argument that each of the XNS Manual and Salgado discloses the functions recited in claims 1–5, the Board made reference to the demand letter that Patent Owner had sent in furtherance of its claim construction.  According to the Board, “[t]he demand letter is not necessary to the holding or the claim construction, but it serves to corroborate the claim construction of module and application outlined above” and “implies that Patent Owner’s claim construction of these terms corresponds to the constructions outlined above.”

The Board went on to find, based on its claim construction and other analysis, and record evidence including the testimony of Dr. Melen, that Petitioner had shown by a preponderance of evidence that the XNS Manual anticipates claims 1–5 and 7–11 of the ’426 patent. The Board then stated that “[b]ased on the finding of anticipation by the XNS Manual of claims 1–5 and 7–11, it is not necessary to reach the ground of anticipation of claims 1–5 and 7–11 by Salgado.”  With respect to claim 6, the Board agreed with Patent Owner, finding that Petitioner had not sufficiently explained how either the XNS Manual or Salgado “discloses the claimed list being read on start-up.”

Patent Owner had moved to exclude Dr. Melen’s testimony on re-direct during his deposition. But since the Board did not consider any of this re-direct testimony, it dismissed the Motion to Exclude as being moot.

Ricoh Americas Corporation and Xerox Corporation v. MPHJ Technology Investments, LLC, IPR2013-00302
Paper 52: Final Written Decision 
Dated: November 19, 2014 
Patent 7,986,426 B1 
Before: Michael P. Tierney, Karl D. Easthom, and Gregg I. Anderson 
Written by: Easthom
Related Proceedings: Engineering & Inspection Services, LLC v. IntPar, LLC, No. 13-0801 (E.D. La., Oct. 10, 2013); Vermont v. MPHJ Tech. Investments LLC, No. 282-5-13 (Ver. Sup. Ct., May 2013) (MPHJ filing notice of removal to D. Vt., June 7, 2013 (No. 2:13-cv-00170)); Hewlett-Packard, Co. v. MPHU Tech. Invs., LLC, Case IPR2013-00309 (PTAB)

 

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