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News Room


Federal Circuit Case Highlights the Importance of a Well Designed Provisional Patent Application StrategyAuthored by: Douglas W. Kim
February 21, 2017

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Recently, the Court of Appeals for the Federal Circuit decided MPHJ Technology Investments, LLC v. Ricoh Americas Corporation, et al., No. 2016-1243 (Fed. Cir. Feb. 13, 2017). This case highlights the importance of a thoughtful patent application strategy, especially when drafting provisional patent applications that will relate to a subsequent non-provisional application.

In this case, the Federal Circuit affirmed that United States Patent No. 8,488,173 ("the '173 Patent") is invalid, and used the related provisional application (Appl. No. 60/108,798) to do so. The '173 Patent is generally directed to a system that uses a scanner to scan documents, text, graphics, etc., stores the scanning information locally, and emails or transmits the file to another computer device with a single-step process where "no user intervention is needed" between the copying step and destination. Slip. Op. at 8 (quoting the '173 Patent). The patent holder, MPHJ Technology Investments, LLC ("MPHJ"), sent more than 16,000 demand letters to small businesses in all fifty states, according to an FTC Complaint filed against MPHJ.
In March 2014, Lexmark Corp., Ricoh Americas Corp., and Xerox Corp. responded by filing with the Patent Trial and Appeal Board ("PTAB") an Inter Partes Review seeking to invalidate the '173 Patent. On August 12, 2015, the PTAB ruled that the '173 Patent was invalid under 35 U.S.C. §§ 102 and 103. MPHJ appealed to the Federal Circuit seeking reversal of the PTAB decision to invalidate the '173 Patent. While the Federal Circuit affirmed the PTAB decision that ruled the '173 Patent was invalid, the arguments made in the case are interesting and may have far-reaching application.
The PTAB ruled that the claims do not require only a single-step operation and invalidated the patent. At the PTAB, MPHJ argued the one-step operation of scanning and transmitting used a single button. MPHJ argued that because the related provisional application states the process involved one step, the claims in the non-provisional application could so be limited to overcome the prior art. MPHJ argued that while this language was omitted in the later filed non-provisional, it was part of the prosecution history and therefore could be used to limit the claims (and avoid the prior art). The Federal Circuit disagreed, stating "[w]e 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." Id. at 11. The Federal Circuit reiterated that "[w]e agree that a provisional application can contribute to understanding the claims." Id.
This case illustrates the potential unintended negative consequences to patent owners when patent strategies are not implemented at the provisional stage. Here, the apparent failure to account for changes in the wording of the specification resulted in an undesirable claim construction ruling. Implementing a well designed patent protection strategy at the provisional stage could have allowed the patent holder to rely upon the language of the provisional patent application instead of having to explain the differences between the provisional and non-provisional patent applications. Consulting with an experienced patent attorney who can assist with developing a protection strategy, drafting a provisional application with this strategy in mind, and understanding the relationship between the provisional and non-provisional applications is recommended in most cases.
If you have questions, please contact the author of this alert, Douglas W. Kim, or a member of the firm's Intellectual Property and Litigation practice groups.