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6 April 2016Patents

Federal Circuit dismisses HP challenge to PTAB ruling

The US Court of Appeals for the Federal Circuit has upheld a ruling by the Patent Trial and Appeal Board (PTAB) that rejected a partial challenge by technology company HP.

In a decision handed down yesterday, April 5, the court rejected HP’s claim that the PTAB should have invalidated all of the challenged claims in US patent number 6,771,381, owned by MPHJ Technology Investments.

In its 2014 decision, the PTAB sided with HP in finding that claims 1-12, 14 and 15 were unpatentable, but said that claim 13 was patentable and not anticipated.

The ‘381 patent, directed to photocopying and called “Distributed computer architecture and process for virtual copying”, was granted in 2004. It covers a method and system that “extend the notion of copying ... to a process that involves paper being scanned from a device at one location and copied to a device at another location”.

After acquiring the patent, MPHJ wrote to several businesses, including users of HP’s printers, alleging patent infringement.

HP petitioned for an inter partes review (IPR) at the PTAB challenging claims 1-15 in the patent as being unpatentable.

The PTAB agreed with HP on all claims but number 13, prompting HP to appeal against the ruling on that point.

Claim 13 is directed to a “computer data management system including a server module comprising enable virtual copy operation means for initiating, cancelling, and resetting said computer data management system”.

According to the claim, it requires a “list of available module means for maintaining a registry” (eg, input, output, and process modules)”.

In its IPR petition, HP cited the user’s guide for the HP ScanJet 5 Scanner (SJ5) and another patent, US number 5,499,108, as reasons for obviousness and anticipation. The ‘108 patent, owned by Visioneer Communications, is directed to a network scanner.

But the board found that the list cited in the patent was not found in either of the two separate anticipation references and that no anticipation was detected.

The PTAB added that HP did not specify clearly “how SJ5 discloses all the recited and argued elements” in claim 13.

In yesterday’s decision, a unanimous federal circuit upheld the ruling.

“Because the board did not err and because we cannot review the decision not to institute, we affirm,” Judge Lourie, who wrote the majority opinion, said.

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