In MPHJ Technology Investments, LLC v. Ricoh Americas Corp., Appeal 2016-1243 (Fed. Cir. Feb. 13, 2017), the Federal Circuit affirmed the PTAB’s final written decision canceling all eight claims in U.S. Patent No. 8,488,173. The patent issued from an application that was the tenth continuation-in-part of a 20-year-old application that relies for priority on seven provisional applications. The decision may be noteworthy if only because it highlights how seemingly-minor changes to these applications over time influenced the PTAB’s interpretation of certain claim terms—an interpretation that finally led the PTAB and court to conclude the claims were not patentable, just as the patent is about to expire.

Quoting the patent’s specification, the court’s decision explains that the patent claims and “describes a system and method that ‘extends the notion of copying from a process that involves paper going through a conventional copier device, to a process that involves paper being scanned from a device at one location and copied to a device at another location.’” Continuing, the court explains that this virtual copier replicates an image using a single GO or START button to “seamlessly” replicate and transmit an image to other devices.

The patent owner unsuccessfully argued that “the claimed ‘seamless’ transmission requires a one-step operation without human intervention,” and stressed “that ‘seamless’ transmission means that ‘no user intervention is needed’ between copying and destination.” In support, the patent owner cited statements in one of its provisional applications that it argued expressly limit the scope of the claims to a one-step copying and sending process. The argument did not persuade the court, however, because those statements were not present in the patent—instead, they were removed. Moreover, the patent describes the single-step feature as “optional.” Thus, even though the specification of the provisional application was incorporated by reference into the patent, the court “conclude[d] that a person of skill in this field would deem the removal of these limiting clauses to be significant,” and that person “would reasonably conclude that the inventor intended that single-step operation would be optional, not obligatory.” Having upheld the PTAB’s claim construction, the court proceeded to assess the record and conclude that substantial evidence supported the PTAB’s conclusion that the challenged claims were unpatentable in view of the prior art.

In a lengthier opinion dissenting-in-part, one Federal Circuit judge disagreed with the PTAB’s construction, concluding that other statements in the patent “collectively rise to the level of clear and unmistakable disavowal of claim scope” sufficient to support the patent owner’s narrower construction. Further, the patent’s incorporation of the provisional application by reference, according to the dissenting judge, “did the opposite of deleting any references to a single-step operation.” According to this judge, some of the eight claims would not have been anticipated by or rendered obvious over the prior art under this narrower claim construction.

The decision is a reminder to patent applicants to think carefully about revisions in a non-provisional application that may depart from the original, intended scope of the provisional application to which it claims priority. It also is a reminder to patent owners to think carefully about the risks of litigating patents whose history may be saddled with such revisions. As this decision shows, even an incorporation of the provisional application by reference may not necessarily protect a patent’s claim from a validity attack years later.