The words that one uses in describing the invention in a patent application have significant impact as to the claim scope in any patent that might mature from the patent application. In MPHJ Technology Investments, LLC v. Ricoh Americas Corporation (Fed. Cir. February 13, 2017), a non-provisional patent application which was identical to its corresponding provisional patent application except for some deleted verbiage had a negative impact on the claim scope of the patent maturing from the non-provisional application.
When securing patent protection for an invention, a startup or business or inventor will file a patent application describing the invention as they best conceive of the invention. However, it is not uncommon and is often the case that after the invention is marketed to the public, the startup, business or inventor will have different ideas about the invention and whether certain features are important or not important. Existing features included in the application may become obsolete or need revision in order to bring value to potential customers. This means that the original patent application may have to be modified in order to account for the changes in the invention. Typically, the original patent application may be a provisional application. The invention may be marketed during the 12 month patent pendency period of the provisional application. When it comes time to file the corresponding non-provisional application, the patent application may need some modifications in order to account for the updates to the invention before filing of the corresponding non-provisional patent application.
It is important to keep track of the changes and be mindful of how the changes to the application may redefine the invention which may have a significant impact on claim scope. In MPHJ, the patent owner (MPHJ) filed a provisional application on what they coined as a virtual copier. A typical physical copier may scan and print a document with the same device. The virtual copier of the present invention contemplates scanning and replicating the information scanned at another location such as a printer at a different location or emailing the scanned information to another person. In the provisional application, the invention was described as one that mimicked the copier. In particular, the physical copier required the user to load the paper for copying then the user pressed copy or start. Without any further user intervention, a print out of the scanned document was produced. Likewise, the provisional application described the virtual copier as a simple method of presenting to a user the complex operation of copying files or electronic images to and from digital imaging devices and/or software applications in one step. Moreover, the provisional application also stated that the virtual copier can copy paper from a physical device directly into a third-party software application in one step.
When the corresponding non-provisional application was filed, these two passages were deleted from the provisional application and not included in the non-provisional patent application. Also, the non-provisional application also included language that the single step operation was optional.
MPHJ sued Ricoh and Xerox based on U.S. Patent No. 8,488,173. Ricoh and Xerox filed an inter partes review which is a post grant proceeding held at the United States Patent and Trademark Office. Ricoh and Xerox utilized a prior art reference that disclosed the same invention except that the prior art reference utilized two steps (i.e. dragging and dropping) and not one step. The tension in this case is that MPHJ wanted the court to agree that the invention recited in the claims was limited to a single step. The patent owner argued for a narrower claim scope to avoid prior art. Ricoh and Xerox wanted the court to agree that the invention recited in the claims was not limited to a single step but was broad enough to encompass one or more steps. Ricoh and Xerox submitted prior art references which would anticipate the claimed invention and thus invalidate the patent’s claims if the claim scope was broadened. The Patent and Trademark Appeal Board held and the Federal Circuit affirmed that the proper claim scope was one which included one or more steps. The Federal Circuit interpreted the deletion of one-step verbiage and the condition of the new claims which did not limit the invention to a one-step operation as important in deciding how to construe the claims. The Federal Circuit affirmed invalidity of the patent claims at issue.
One of the goals in preparing a patent application is to not lock the definition of the invention too narrowly. For example, a claim directed to a one-step operation would be easy to design around by simply adding another step. However, the MPHJ case illustrates that a proper claim scope for a claim set may need to contemplate both a claim directed to a single step operation which is the preferred operation and also another claim for a multi step operation. In this case, the amendments to the provisional application which was later filed as a non-provisional application had unintended consequences which were not felt until many years later during the instant litigation.
One of the ways to mitigate such negative unintended consequences is to have a continuation application on file prior to the maturity of the non-provisional application. In this case, the patent does have a corresponding pending continuation application on file. See Public Pair below. The inventor or patent owner can use the current pending patent application to resubmit new claims identical to the claims at issue but to narrow them down to a single step operation so that the new claim would survive the same attack on the validity of the patent claims as in the instant case.
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