Resolving what was primarily a broadest reasonable
interpretation (BRI) claim construction issue, the US Court of
Appeals for the Federal Circuit upheld a Patent Trial and Appeal
Board (PTAB) decision that invalidated claims of a patent directed
to scanning a document and sending it to an email address as a PDF
file. MPHJ Technology Investments, LLC, v. Ricoh Americas
Corporation, et al., Case No. 16-1243 (Fed. Cir., Feb. 13,
2017) (Newman, J) (O'Malley, J, dissenting in part).
Patent owner MPHJ argued that the PTAB wrongly construed the
claims during an inter parte review (IPR) proceeding to
mean that the scanning and emailing steps could be performed as
separate steps. In particular, MPHJ argued that "the claimed
'seamless' transmission requires a one-step operation
without human intervention," and stressed "that
'seamless' transmission means that 'no user
intervention is needed' between copying and destination."
In support, MPHJ cited statements in one of its provisional
applications that it argued expressly limit the scope of the claims
to a one-step copying and sending process. The Federal Circuit
disagreed, noting that these statements were not present in the
patent because they were removed during prosecution.
Of particular interest, the Federal Circuit treated the
incorporation of the provisional application by reference as
evidence that the applicant intended to remove the one-step
limitation. The Court explained that the patent "contains no
statement or suggestion of an intent to limit the claims" to a
single step and in fact describes single-step operation as
"optional." Even though the specification of the
provisional application was incorporated by reference into the
patent, the Court concluded "that a person of skill in this
field would deem the removal of these limiting clauses to be
significant," and that a competitor "would reasonably
conclude that the inventor intended that single-step operation
would be optional, not obligatory." The Court concluded that
substantial evidence supported the PTAB's ruling that the
challenged claims were unpatentable in view of the prior art.
In dissent, Judge O'Malley disagreed with some of the claim
constructions adopted by the panel and, based on an alternative
construction, would have found some claims to be patentable.
In Wasica Finance GmbH v. Continental Automotive Systems, Inc., No. 15-2078 (Fed. Cir. 2017), the patentee Wasica Finance discovered, among other things, the importance of using consistent terminology in the patent specification and claims.
While under attack for several years now, the patent infringement defense of laches was dealt a serious, and likely final, blow by the recent Supreme Court case of SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al.
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
On April 6, 2017, the Federal Circuit reversed-in-part and affirmed-in-part the district court's judgment of infringement and summary judgment for non-infringement of The Medicines Company's ("MedCo") patents-in-suit.
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