Xerox Corporation v. Midwest Athletics and Sports Alliance LLC

1. Case Identification

• Patent #: 7,720,425
• Filed: December 13, 2018
• Petitioner(s): Xerox Corporation
• Patent Owner(s): Midwest Athletics and Sports Alliance LLC
• Challenged Claims: 1-15

2. Patent Overview

• Title: Method of Forming a Pentachrome Image with Clear Toner Overcoat
• Brief Description: The ’425 patent discloses methods for forming a pentachrome (five-color) image using a tandem color electrostatographic printer. The method involves a first pass to deposit and fuse a five-color image, followed by a second pass to deposit and fuse a clear toner overcoat using the same fuser station.

3. Grounds for Unpatentability

Ground 1: Obviousness over Richards and Alexandrovich - Claims 1-7, 11-13, and 15 are obvious over Richards in view of Alexandrovich.

• Prior Art Relied Upon: Richards (Patent 6,535,712) and Alexandrovich (Patent 6,608,641).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Richards teaches a modular printing system that can be electrophotographic and can include "any number" of color toner application units, plus a clear toner application unit. Richards also explicitly discloses a recycle path allowing a media sheet to pass through printer components, including a fuser, multiple times. Alexandrovich, which is cited in the ’425 patent itself to describe the basic tandem printer architecture, was argued to supply the missing details of a tandem printer with five or more color stations. Petitioner contended that Richards teaches fusing a color image, applying a clear toner, and re-fusing, which meets the core steps of claim 1.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) reading Richards’ disclosure of a modular tandem system would have looked to a reference like Alexandrovich, which the ’425 patent admits describes a well-known tandem architecture, to fill in the implementation details. The combination would have predictably resulted in a high-quality color image with a protective clear overcoat.
  • Expectation of Success: Combining these known elements—a tandem printer architecture from Alexandrovich with the multi-pass fusing and clear coat process from Richards—was argued to be a straightforward application of known technologies to achieve a predictable result.

Ground 2: Obviousness over Richards, Alexandrovich, and Aslam - Claims 8 and 9 are obvious over the combination for Ground 1 in further view of Aslam.

• Prior Art Relied Upon: Richards (Patent 6,535,712), Alexandrovich (Patent 6,608,641), and Aslam ’234 (Patent 5,887,234).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground adds Aslam ’234 to the primary combination to teach the "glosser" limitation of claims 8 and 9. Petitioner asserted that while Richards teaches some gloss control, a POSA would have been motivated to seek improved techniques. Aslam ’234 was argued to disclose a "reproduction apparatus providing for selectable image quality and gloss," which functions as a glosser. Specifically, Aslam ’234 teaches a selectable gloss system with a high-gloss belt fuser (recited in claim 9) that could be substituted for the fuser in Richards to provide enhanced, selectable gloss control.
  • Motivation to Combine: A POSA seeking to improve the gloss control of the system in Richards/Alexandrovich would have been motivated to incorporate the dedicated glossing system from Aslam ’234. This would have been a substitution of a known element (a fuser) with a more advanced, functionally similar element (a selectable glosser) to gain a known benefit.
  • Expectation of Success: Incorporating Aslam’s glosser into the Richards system would have been a predictable modification with a high expectation of success, as it involved replacing one fusing component with another to enhance a known property (gloss).

Ground 3: Obviousness over Alexandrovich and Haneda - Claims 1-7 and 11-13 are obvious over Alexandrovich in view of Haneda.

• Prior Art Relied Upon: Alexandrovich (Patent 6,608,641) and Haneda (Patent 5,260,753).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground presents an alternative primary combination. Petitioner argued Alexandrovich teaches a base tandem printer with four color modules and suggests it could be extended to more. Haneda was argued to teach the remaining key steps: a multi-pass process using a reversal paper path. Haneda discloses forming and fixing a first image (e.g., color), recycling the media sheet, and then forming and fixing a second image (e.g., clear toner) on the same sheet. Haneda also explicitly teaches using a single fuser station with changeable parameters for both fusing operations, directly mapping to limitations of the ’425 patent claims.
  • Motivation to Combine: A POSA starting with Alexandrovich’s tandem printer would have been motivated to incorporate Haneda’s multi-pass and fusing-before-recoating method. This combination was argued to be advantageous because fusing the color image first prevents smearing during the subsequent clear toner application, a known problem with a known solution provided by Haneda.
  • Expectation of Success: Combining the well-known printer architecture of Alexandrovich with the well-understood multi-pass process of Haneda would have been a predictable integration of known techniques to improve image-forming flexibility and durability.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Richards, Alexandrovich, and Ng ’783 (Patent 5,234,783) for the "inverse mask" limitations of claims 10 and 14. Further grounds combined Alexandrovich and Haneda with Johnson (Patent 5,392,104) for glosser limitations and with Bibl (Patent 4,706,605) for modifying a single print station to dispense multiple toners.

4. Key Claim Construction Positions

• "receiver member": Petitioner argued this term should be construed as "a substrate upon which the toner image is fixed for delivery to an end user." This construction was proposed to emphasize that the receiver member is a discrete element (e.g., a sheet of paper) that passes through the various printer components, distinguishing it from a permanent component like an intermediate transfer belt. This interpretation is critical to the argument that the prior art teaches multi-pass processing of a discrete media sheet.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under §325(d). Although the examiner mentioned the Richards reference during prosecution of the ’425 patent, Petitioner asserted that the examiner did not actually use Richards to reject the pending claims, nor did the examiner consider Richards in combination with Alexandrovich or other art as proposed in the petition. Furthermore, the examiner appeared to have only considered a single figure from Richards, not the figures and embodiments central to Petitioner's invalidity arguments.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-15 of Patent 7,720,425 as unpatentable under 35 U.S.C. §103.