CAFC affirms PTAB in MPHJ v. Ricoh
Judge Newman wrote in MPHJ TECHNOLOGY INVESTMENTS v. RICOH :
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, 136 S. Ct. 2131 (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.
The impact of a DELETION from a corresponding provisional
is at issue:
We agree that a provisional application can contribute
to understanding the claims. See Trs. of Columbia Univ.
in New York v. Symantec Corp., 811 F.3d 1359, 1365 (Fed.
Cir. 2016) (looking to the provisional application for
guidance as to claim construction); Vederi, LLC v. Google,
Inc., 744 F.3d 1376, 1383 (Fed. Cir. 2014) (same). In this
case, it is the deletion from the ’798 Provisional application
that contributes understanding of the intended scope
of the final application.
We conclude that a person of skill in this field would
deem the removal of these limiting clauses to be significant.
The ’173 Patent in its final form contains no statement
or suggestion of an intent to limit the claims to the
deleted one-step operation. Neither the specification nor
the claims state that this limited scope is the only intended
scope. Instead, the ’173 Patent describes the singlestep
operation as “optional.”
Inherent anticipation arose:
The Board credited Petitioner’s
expert witness’ testimony that Harkins inherently discloses
employing email protocols to transmit email. Bd.
Op. 35–36. Substantial evidence supports the Board’s
finding that Harkins contemplates the same sequential
scanning and transmission as discussed for the XNS
system, and anticipates the ’173 Patent’s claims as construed
by the Board.