MPHJ Tech. Invs., LLC v. Ricoh Ams. Corp.

• Decision Date: 13 February 2017
• Docket Number: 2016–1243
• Citation: 847 F.3d 1363,121 U.S.P.Q.2d 1625
• Parties: MPHJ TECHNOLOGY INVESTMENTS, LLC, Appellant v. RICOH AMERICAS CORPORATION, Xerox Corporation, Lexmark International, Inc., Appellees
• Court: U.S. Court of Appeals — Federal Circuit

847 F.3d 1363

121 U.S.P.Q.2d 1625

MPHJ TECHNOLOGY INVESTMENTS, LLC, Appellant

v.RICOH AMERICAS CORPORATION, Xerox Corporation, Lexmark International, Inc., Appellees

2016–1243

United States Court of Appeals, Federal Circuit.

Decided: February 13, 2017

Vivek Ganti , Hill Kertscher & Wharton LLP, Atlanta, GA, argued for appellant. Also represented by Steven G. Hill .

Jon Wright , Sterne Kessler Goldstein & Fox, PLLC, Washington, DC, argued for appellees. Also represented by Michael D. Specht, Richard M. Bemben .

Before Newman, Lourie, and O'Malley, Circuit Judges.

Opinion concurring in part, dissenting in part filed by Circuit Judge O'Malley.

Newman, Circuit Judge.

MPHJ Technology Investments, LLC appeals the decision of the Patent Trial and Appeal Board ("Board" or "PTAB"), on Inter Partes Review, that claims 1–8 of MPHJ's U.S. Patent No. 8,488,173 ("the '173 Patent") are invalid on the grounds of anticipation or obviousness.¹ On appellate review, we affirm the Board's decision.

To determine the validity of a patented invention, the meaning and scope of the claims are first determined. See Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc. , 183 F.3d 1347, 1353 (Fed. Cir. 1999) ("[T]he first step in any validity analysis is to construe the claims of the invention to determine the subject matter for which patent protection is sought."). As ratified by the Supreme Court in Cuozzo Speed Technologies, LLC v. Lee , ––– U.S. ––––, 136 S.Ct. 2131, 195 L.Ed.2d 423 (2016), when unexpired patents are reviewed by the Board, the claims are given their broadest reasonable interpretation consistent with the specification and the prosecution history, from the viewpoint of persons skilled in the field of the invention.

BACKGROUND

The '173 Patent, entitled "Distributed Computer Architecture and Process for Document Management," describes a system and method that "extends the notion of copying from a process that involves paper going through a conventional copier device, to a process that involves paper being scanned from a device at one location and copied to a device at another location." '173 Patent, col. 5, ll. 51–55. The '173 Patent calls its invention a "Virtual Copier" ("VC") whose purpose is "to enable a typical PC user to add electronic paper processing to their existing business process." '173 Patent, col. 5, ll. 47–50. The patent states that its VC replicates an image "using a single GO or START button, to do a similar operation in software so that the image gets seamlessly replicated into other devices or applications or the Internet." '173 Patent, col. 6, ll. 38–43. Patent Figure 28 illustrates various input devices and destinations, moving by software through the virtual copier:

The challengers, Ricoh Americas Corporation, Xerox Corporation, and Lexmark International, Inc. (collectively, "Petitioner"), requested Inter Partes Review of claims 1–8, all of the '173 Patent claims, in accordance with 35 U.S.C. § 311 et seq . The PTAB instituted review, construed the claims, conducted a hearing, and held the claims unpatentable based on several prior art references. The PTAB found claims 1–8 anticipated by the Xerox Network Systems Architecture General Information Manual dated April 1985 ("XNS") and the XNS features in Xerox 150 Graphic Input Station Operator and Reference Manual dated January 1985 ("GIS 150"). The PTAB also found claims 1–8 anticipated by U.S. Patent No. 5,513,126 to Harkins, and/or obvious in view of the combination of Harkins and U.S. Patent No. 5,818,603 to Motoyama. On this appeal MPHJ argues that the Board incorrectly broadly construed the claims and that on the correct narrow claim construction the claims are neither anticipated nor obvious.

System claim 1 and method claim 4, the independent claims, were deemed representative:

1. A system capable of transmitting at least one of an electronic image, electronic graphics and electronic document to a plurality of external destinations including one or more of external devices, local files and applications responsivelyconnectable to at least one communication network, comprising:

at least one network addressable scanner, digital copier or other multifunction peripheral capable of rendering at least one of said electronic image, electronic graphics and electronic document in response to a selection of a Go button;

at least one memory storing a plurality of interface protocols for interfacing and communicating;

at least one processor responsively connectable to said at least one memory, and implementing the plurality of interface protocols as a software application for interfacing and communicating with the plurality of external destinations including the one or more of the external devices and applications,

wherein one of said plurality of interface protocols is employed when one of said external destinations is email application software;

wherein a second of said plurality of interface protocols is employed when the one of said external destinations is a local file;

wherein a plurality of said external destinations is in communication with said at least one network addressable scanner, digital copier or other multifunction peripheral over a local area network;

wherein at least one of said external destinations receives said electronic image, electronic graphics and electronic document as a result of a transmission over the at least one communication network;

a printer other than said at least one network addressable scanner, digital copier or other multifunction peripheral;

wherein, in response to the selection of said Go button, an electronic document management system integrates at least one of said electronic image, electronic graphics and electronic document-using software so that said electronic image, electronic graphics and electronic document gets seamlessly replicated and transmitted to at least one of said plurality of external destinations;

wherein at least one of said electronic image, electronic graphics and electronic document is processed by said at least one network addressable scanner, digital copier or other multifunction peripheral into a file format, and wherein a plurality of said external destinations are compatible with said file format without having to modify said external destinations; and

wherein upon said replication and seamless transmission to at least one of said external destinations, said electronic image, electronic graphics and electronic document is communicable across a network to at least three other of said external destinations, and is optionally printable by said printer.

'173 Patent, col. 86, ll. 9–63. MPHJ states that the claimed "seamless" transmission requires a one-step operation without human intervention, and that this system is not shown in the prior art.

For method claim 4, MPHJ emphasizes the provision for "interfacing between at least one of said scanner, digital copier or other multifunction peripheral and email application software" in claim section (d), and argues that this means that the operation from scanner to email destination occurs in a single step. Claim 4 states:

4. A method of managing at least one of an electronic image, electronic graphics or electronic document comprising the steps of, in any order:

(a) transmitting a plurality of any of said electronic image, electronic graphics or electronic document from a source address to a plurality of external destinations including one or more of external devices, local files and applications responsive to said source address using at least one communication network;

(b) rendering said plurality of any of said electronic image, electronic graphics or electronic document by a network addressable scanner, digital copier or other multifunction peripheral located at said source address;

(c) communicatively linking said scanner, digital copier or other multifunction peripheral with said plurality of said external destinations via application-level interface protocols;

(d) interfacing between at least one of said scanner, digital copier or other multifunction peripheral and email application software using a first of said interface protocols;

(e) interfacing between at least one of said scanner, digital copier or other multifunction peripheral and a local file using a second of said interface protocols;

(f) communicating over a local area network between said at least one of said scanner, digital copier or other multifunction peripheral and said plurality of said external destinations;

(g) transmitting a first electronic image, electronic graphics or electronic document from said at least one of said scanner, digital copier or other multifunction peripheral to at least one of said external destinations where at least a portion of said transmitting of step (g) occurs by communicating via Internet, and using one or more of said interface protocols;

(h) integrating via at least one processor communicatively coupled with said at least one of said scanner, digital copier or other multifunction peripheral, a second electronic image, electronic graphics or electronic document so that said second electronic image, electronic graphics or electronic document gets seamlessly replicated and transmitted to at least one of said plurality of said external destinations;

(i) processing via said at least one processor said plurality of any of said electronic image, electronic graphics or electronic document into a uniform file format, wherein said plurality of said external destinations are compatible with said format without having to modify said external destinations; and

(j) seamlessly transmitting said first or second electronic image, electronic graphics or electronic document over said network from a first external destination to another of said external destinations.

'173 Patent, col. 87, l. 10–col. 88, l. 20. MPHJ stresses that "seamless" transmission means that "no user intervention is needed" between copying and destination. MPHJ Br. 16. MPHJ states that it is "irrelevant ... [w]hether...