In MPHJ Tech v. Ricoh Corp., the Federal Circuit affirmed a conclusion of anticipation and obviousness from an Inter Partes Review involving US 8,488,173 (‘173). The content of the art was not really in dispute. Rather, the focus of the disagreement concerned just how broad is the reach of the broadest reasonable interpretation of the claims.
The ‘173 patent claims a process by which a document can be scanned on one copy machine, and the reproduction printed at another location. Almost all copy machines used in modern offices have such functionality, but none of Ricoh, Xerox, or Lexmark had licensed the ‘173 patent from MPHJ. Therefore, MPHJ regarded every office that had such a copy machine as an infringer. MPHJ attracted quite a lot of publicity when it began sending demand letters to offices threatening lawsuits if payments of $1000 were not made for every worker in the office who uses the copy machine.
Ricoh, Xerox, and Lexmark requested IPR consideration of the ‘173. The claims at issue required that the process be instigated by the activation of a “Go button.” The two sides disagreed whether the claims read on processes in which a human user continued to intervene in the process after the “Go button” had been activated, or whether the claims were limited to processes in which all functions after the activation of the “Go button” continued automatically. Judges O’Malley and Lourie agreed with the Patent Trial and Appeal Board that the claims read on processes with intervening human actions, while Judge Newman wrote a dissent to explain why she believes that even under the broadest reasonable interpretation, the claims only read on fully automated processes.
The real crux of the dispute was that the ‘173 patent derives from a provisional U.S. application, which is incorporated in the ‘173 patent by reference. The provisional explains that “[u]sing … Xerox’s Pagis, the user must first ‘import’ or scan paper in the capture application and then … direct the output to another location. With the [invention of ‘173], a single button (the Go button) directly copies paper … and places it with the third-party application.” Both the majority and the dissent appear to regard this language in the provisional as strong enough to disclaim processes — like Xerox’s — that require human intervention after the “Go button” activation.
This language, however, was omitted from the non-provisional. The question, then, was what effect was accomplished by removing this limiting language between provisional and non-provisional applications. The majority concluded that a disclaimer can only be accomplished by clear and unambiguous statements, and the fact that the patent applicant removed the disclaiming language between provisional and non-provisional stages indicates that the patentee did not clearly intend to give up processes with intervening human actions. The dissent, by contrast, reasons that the provisional was incorporated by reference, and thus this limiting language is present in the non-provisional application.
It is worth noting that a similar situation (text found in provisional but not in non-provisional application) occurred in Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1365 (Fed. Cir. 2016). In that case, a narrow definition of a claim term appeared in a provisional application, but that narrow definition was omitted from the corresponding non-provisional. Because the non-provisional incorporated the provisional by reference, however, the Symantec court held that the narrow definition in the provisional controlled and compelled a verdict of non-infringement.
Despite the precedent in Symantec, the MPHJ majority held that the narrowing language in MPHJ’s provisional did not effect a disclaimer of claim scope. In other words, the Symantec court was willing to use the provisional to narrow the claim construction when a narrow construction lead to non-infringement, but in MPHJ — where a narrow construction would support patentability — the court discounted the narrowing language from the provisional.
Likely, the disparate outcomes between these two cases reflects the difference between broadest reasonable interpretation applied in IPRs and Philips standards of claim construction applied by district courts like the court in Symantec. The take-home lesson from this case is that parties to an IPR need to consider carefully not only the patent specification when evaluating potential claim constructions, but also documents incorporated by reference.