Ricoh Americas Corp v. MPHJ Technology Investments LLC

1. Case Identification

• Case #: IPR2015-01178
• Patent #: 7,477,410
• Filed: May 8, 2015
• Petitioner(s): Ricoh Americas Corporation, Xerox Corporation, and Lexmark International, Inc.
• Patent Owner(s): MPHJ Technology Investments, LLC
• Challenged Claims: 3, 5, 10, 12, 17, 19, 24, 26, 29-33, 36, 38, 43, and 45

2. Patent Overview

• Title: Virtual Copier
• Brief Description: The ’410 patent discloses a "Virtual Copier" software system for network scanning. The system is designed to emulate the look, feel, and workflow of a conventional physical copier, allowing a user to scan a document at one networked device and copy it to another remote device or business application.

3. Grounds for Unpatentability

Ground 1: Anticipation over XNS - Claims 3, 5, 10, 12, 17, 19, 24, 26, 29-32, 36, 38, 43, and 45 are anticipated under 35 U.S.C. §102 by XNS, with inherent features evidenced by GIS150.

• Prior Art Relied Upon: XNS (Xerox Network Systems Architecture General Information Manual, April 1985) and GIS150 (Xerox 150 Graphic Input Station Operator and Reference Manual, January 1985).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that XNS, a comprehensive 1985 manual describing Xerox's office network architecture, disclosed every element of the challenged claims. XNS described a document management system capable of transmitting electronic documents to external devices and applications both locally and via the internet. It detailed multiple transmission and application protocols for creation, capture, storage, and communication of electronic documents. Petitioner asserted that system elements like workstations and scanners described in XNS inherently included the claimed memory and processors. The GIS150 manual was used as extrinsic evidence to show inherent features of the Xerox 150 scanner, an element in the XNS system, such as a "START" button for a "GO" operation and the capability to perform single-step processing tasks like cropping.
  • Key Aspects: The core of this ground was that the entire "Virtual Copier" concept was already present in commercially available office network systems, like those from Xerox, more than a decade before the patent's alleged priority date.

Ground 2: Obviousness over XNS in view of Admitted Prior Art - Claim 33 is obvious over XNS in view of Admitted Prior Art (APA).

• Prior Art Relied Upon: XNS (Xerox Network Systems Architecture General Information Manual, April 1985) and APA (disclosures within the ’410 patent regarding the well-known status of Microsoft’s Component Object Model, or COM).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that XNS disclosed all the "objects" recited in claim 33. The claim further required these objects to have "COM-based interfaces." While XNS did not explicitly mention COM, the ’410 patent itself admitted that COM was a well-known, standard communication protocol designed by Microsoft and that any Windows developer would be familiar with it.
  • Motivation to Combine: Petitioner argued a POSITA would combine XNS with COM to improve system compatibility. XNS explicitly stated a commitment to "compatibility among products from different vendors" and the need to adopt emerging standards. A POSITA would therefore have been motivated to implement the various objects and modules described in XNS using a well-known standard protocol like COM to further XNS’s stated goals of flexibility and interoperability.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because implementing known document management functions (from XNS) using a known standard protocol (COM) was a predictable design choice.

Ground 3: Anticipation over Harkins - Claims 3, 5, 10, 12, 17, 19, 24, 26, 29, 30, 32, 36, 38, 43, and 45 are anticipated under §102 by Harkins.

• Prior Art Relied Upon: Harkins (Patent 5,515,126).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Harkins, which issued before the ’410 patent's priority date, disclosed a networked multimedia document processing system that taught every limitation of the challenged claims. Harkins described a system with interconnected printers, scanners, and file servers, enabling transparent communication for users across local networks and the internet. The system included a user interface for managing document workflows (scanning, sending, printing) and inherently required APIs for the variety of disclosed hardware and software from different vendors (e.g., Sun, Apple, Xerox) to function on the network. Harkins also disclosed various system "objects" for managing lists of available services (modules object) and active documents (document object).
  • Key Aspects: This ground focused on Harkins's detailed description of the user's interaction with a networked document system, demonstrating that the "seamless" and user-friendly workflow claimed in the ’410 patent was already known.

• Additional Grounds: Petitioner asserted that claim 31 is obvious over XNS alone, arguing that even if XNS did not explicitly disclose reading a list of modules on "startup," doing so was an obvious design choice to improve runtime efficiency. Petitioner also asserted that claim 31 is obvious over Harkins, and that claim 33 is obvious over Harkins in view of the APA regarding COM, relying on similar motivation-to-combine arguments as presented for the XNS-based grounds.

4. Key Claim Construction Positions

• "at last one": Recited in claims 5, 12, 19, 26, 38, and 45. Petitioner argued this was a clear drafting error for "at least one," as "at least one" was used ubiquitously elsewhere in the claims.
• "application" / "software application": Petitioner adopted the construction from a final written decision in a related IPR (’302 Final Decision), defining a "software application" as a program or group of programs performing a function, and an "application" as potentially including both hardware and software.
• "modules object," "program object," etc.: Petitioner adopted the Board's construction from related IPRs, defining an "object" as "one or more programs, files, or structures for performing the designated functions."
• "seamlessly": Petitioner argued, based on expert testimony and prior Board constructions in related cases, that the term should be construed to mean "a low amount of effort."
• Means-Plus-Function (Claim 31): Petitioner asserted that the means-plus-function limitations in claim 31 recited standard document management functions and that their corresponding structures were generic algorithms and basic hardware (processors, memory, buttons) known in prior art copiers and scanners.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 3, 5, 10, 12, 17, 19, 24, 26, 29-33, 36, 38, 43, and 45 of Patent 7,477,410 as unpatentable.