Docket No. 2016-1243 (IPR2014-00538)
NEWMAN, LOURIE, O’MALLEY (D)
February 13, 2017
Brief Summary: Board claim construction based in part on deletion of statement from provisional application incorporated by reference in the patent and anticipation conclusion affirmed.
Summary: MPHJ appealed Board decision after IPR that claims 1-8 of US 8,488,173 realted to a “Virtual Copier” are anticipated or obvious. System claim 1 and method claim 4 were deemed representative and MPHJ argued “that the claimed ‘seamless’ transmission requires a one-step operation without human intervention” which “is not shown in the prior art”, and “it is ‘irrelevant…[w]hether intermediate components exist betweenthe scanner and application software.” The Board disagreed, finding the claims include “scanning and emailing, whether in separate steps or in a single step, with or without user intervention by human or by machine.” The FC panel explained that claim terms in unexpired patents reviewed by the Board are given their broadest reasonable interpretation (BRI) “consistent with the specification and the prosecution history, from the viewpoint of persons skilled in the field of invention” (Cuozzo, US 2016) (the 18-month rule referred to in Personal Web (Feb. 2017) was not mentioned or relevant here), and “that a provisional application can contribute to understanding the claims” (Trs. of Columbia Univ., FC 2016; Vederi, FC 2014). MPHJ argued its interpretation was supported by its provisional application to which the ‘173 patent claims priority but Ricoh argued that those statements were omitted from the final application. And the FC panel concluded “that a person of skill in this field would deem the removal of these limiting clauses to be significant” (“Neither the specification nor the claims state that this limited scope is the only intended scope. Instead, the ‘173 Patent describes the single-step operation as ‘optional’…not obligatory.”) MPHJ argued that the Board’s construction of “application” and “rendering” were also incorrect but the FC panel disagreed. It therefore agreed with the Board’s claim construction. The FC panel also found the Board’s conclusion of anticipation to be supported by substantial evidence, including expert testimony. Given that it agreed with the Board’s anticipation conclusion, the FC panel did not address the obviousness arguments. The Board decision was therefore affirmed. Judge O’Malley dissented with the construction of “Go button” and “interfacing” as well as anticipation conclusion for claims 4-8 and obviousness conclusion for claims 1-8. Regarding the provisional application issue, Judge O’Malley wrote that “the ‘173 patent in fact make(s) repeated references to a single-step operation” and “incorporates in full the ‘798 provisional application, including all of the statements the patentee made about the single step nature of the VC invention” (“In fact, by incorporating the ‘798 provisional application, the patentee did the opposite of deleting any references to a single-step operation.”) In discussing one of the anticipation findings, Judge O’Malley also noted that “optional elements do not narrow the claim because they can always be deleted” (In re Johnston, FC 2006), “a ‘wherein’ clause limit[s] a claim where the clause [gives] ‘meaning and purpose to the manipulative steps’ of the claim” (Griffin, FC 2002), and “[a] ‘whereby’ clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim” (Tex. Instr., FC 1993).