PTAB

IPR2013-00309

Hewlett Packard Co v. MPHJ Technology Investments LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and system for tracking status of a document sent through a network
  • Brief Description: The ’381 patent discloses a system where a user can scan a paper document using a scanner connected to a computer, which then generates an electronic document file. The system attaches this file to an email and transmits it over a network to a recipient, while also providing a mechanism for tracking the status of the document after it has been sent.

3. Grounds for Unpatentability

Ground 1: Anticipation by Silverbrook - Claims 1, 4, 8, and 10 are anticipated under 35 U.S.C. §102 by Silverbrook.

  • Prior Art Relied Upon: Silverbrook (Patent 6,243,178)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Silverbrook, which describes a comprehensive "Netpage" system for interacting with printed documents via a network, teaches every limitation of the challenged claims. Petitioner asserted that Silverbrook’s system explicitly discloses a scanner for creating an electronic document, a processor for generating an email with the document as an attachment, and a network interface for sending the email. For the key limitation of "tracking the status," Petitioner contended that Silverbrook’s disclosure of maintaining transaction files and page server logs—which record the progress and delivery of documents through the system—inherently discloses this functionality. The tracking of document transmission and printing confirmation within the Netpage system was argued to directly correspond to the status tracking claimed in the ’381 patent.
    • Key Aspects: The core of this argument rested on the assertion that the standard logging and administrative functions inherent in Silverbrook's networked document management system were sufficient to meet the claim limitation for "tracking the status," without needing an explicit user-facing tracking feature.

Ground 2: Obviousness over Blumenthal and Cannon - Claims 1, 4, 8, and 10 are obvious over Blumenthal in view of Cannon under 35 U.S.C. §103.

  • Prior Art Relied Upon: Blumenthal (Patent 6,330,593), Cannon (Patent 6,366,912)

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Blumenthal teaches a system for scanning a document at a user's computer and sending it as an email attachment, thus disclosing the core elements of the claims: a scanner, a computer processor generating an email with an attached document, and a network interface. However, Petitioner contended that Blumenthal does not explicitly teach tracking the document's status after it is sent. To supply this missing element, Petitioner pointed to Cannon, which discloses a system for tracking email messages by monitoring their delivery status (e.g., delivered, opened, deleted) and providing notifications to the sender.
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would be motivated to combine the document-to-email system of Blumenthal with the email tracking functionality of Cannon for predictable and beneficial results. The motivation would be to enhance Blumenthal's system by providing senders with valuable feedback on whether an important scanned document, such as a signed contract, was successfully delivered and received. This combination was presented as a simple integration of known technologies to solve the common problem of uncertainty in electronic document delivery.
    • Expectation of Success: A POSITA would have a high expectation of success in making this combination. Both references describe software-based systems operating over standard computer networks. Integrating a known email tracking module (like Cannon's) into a known document-to-email workflow (like Blumenthal's) would involve conventional programming and system integration techniques widely understood at the time.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1, 4, 8, and 10 based on the combination of Silverbrook and Cannon, relying on a similar motivation to add the explicit email tracking features of Cannon to the document distribution system disclosed by Silverbrook.

4. Key Claim Construction Positions

  • "tracking the status of the document": Petitioner argued this term should be construed according to its plain and ordinary meaning, which would encompass any form of monitoring the document's disposition after being sent. This includes automated system-level logging of delivery, server acknowledgments, or recipient interaction, not just a specific user-facing tracking interface. This broad construction was central to its argument that the inherent logging functions in Silverbrook met the limitation for anticipation and that the delivery notifications in Cannon clearly supplied the tracking element for its obviousness grounds.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 4, 8, and 10 of Patent 6,771,381 as unpatentable.