Patentee’s Narrow Claim Construction was not Supported by Limitation Present in Provisional Application but Deleted from the Challenged Patent

March 2017

MPHJ Technology Investments, LLC. v. Ricoh Americas Corporation, No. 16-1243 (Fed. Cir. Feb. 13, 2017)

In MPHJ, the Federal Circuit held that the claims in MPHJ’s patent directed to a virtual copier were anticipated by prior art from Xerox. The Federal Circuit agreed with the broad claim construction employed by the Patent Trial and Appeal Board in finding anticipation, and rejected MPHJ’s narrower claim construction that was based on a definition found in MPHJ’s provisional application that had been removed when the application was converted to non-provisional status.

MPHJ was the owner of a patent directed to a “virtual copier,” which claimed “software that manages paper so that it can be electronically and seamlessly copied in and out of devices and business applications with an optional single-step operation.” MPHJ was involved in aggressively asserting their patent against thousands of small business owners across the country. In a move described as protective of customers, a number of copier and scanner manufacturers, including Ricoh Americas and Xerox, challenged the patent in inter partes review.

The manufacturers alleged the claims of the patent were anticipated by Xerox patents that described systems and methods to scan and send files to a server, print server or e-mail application. The alleged anticipating references described a two-step process wherein the user scanned a document, and transmitted it with a second action. MPHJ’s argued that its claims were limited to one-step processes where a document could be scanned and sent with a single user action. MPHJ pointed to the specification of the provisional application to which the challenged patent claimed priority, which contained direct references to a virtual copier that “can copy paper from a physical device directly into a third-party software application in one step.” The Board rejected MPHJ’s arguments, held that the claims were not limited to one-step embodiments, and that they were anticipated by Xerox’s patents.

The Federal Circuit affirmed. It rejected MPHJ’s arguments that terms like “Go button”, interfacing” and “seamlessly” implied a single step operation, the holding instead that no statement or suggestion in the specification showed a clear intention to limit the claims to the deleted one step operation – in fact, the single step operation was described as “optional.” It agreed with MPHJ that the specification of the provisional application was instructive, but interpreted it to reach a different result. The deletion of references to a single-step operation from the non-provisional were evidence that the patentees did not intend to limit the issued claims in that manner. As a result, a person of ordinary skill would reasonably conclude that the inventor intended that single step operation be optional, not obligatory, and MPHJ’s system and method were anticipated by the Xerox prior art.

Key Takeaway: Terms and definitions appearing in a provisional application may shed light on the construction of claim terms in a non-provisional patent. However, the deletion of material from a provisional application may be viewed as evidence that the deleted material was not intended to limit the claims.