HP Launches the Second Attack against Scan to E-Mail Patents

HP has also filed a petition challenging an earlier-issued MPHJ patent, No. 6,771,381. The patent describes a “virtual copier” that “involves paper being scanned from a device at one location and copied to a device at another location.”

In the petition, HP says its own printers, the ScanJet 5 and LaserJet 3100 (circa 1997) and the ScanJet 4Si (circa 1995), had all the functionality described in the patent. It also mentions other patents that anticipate the ‘381 patent’s claims. The petition includes manuals for the printers, which describe how to scan documents to e-mail a year or more before Laurence Klein’s patents were filed.

HP’s petition was filed on May 24, one day after Xerox and Ricoh filed their own petition focusing on networking technology. The patent being critiqued in that petition “claim[s] nothing more than a well-known concept for enabling a typical PC user to add electronic paper processing to their existing business process,” Xerox lawyers state. Xerox’s own networking systems predate the MPHJ patents by a full decade, the petition argues.

An HP spokesperson declined to say anything about the petition or about why the company chose to fight this particular MPHJ patent. Patent office records don’t show any legal challenges against the two other MPHJ patents not subject to last week’s petitions.

New rules stemming from the America Invents Act have strengthened the legal process being used by HP, Xerox, and Ricoh. It’s known as “inter partes review,” which replaces “inter partes reexamination.” Essentially, the review allows a party to argue to the Patent Office that a patent shouldn’t have been issued in the first place. Under the new process, if the petition for review is accepted, a determination must be made within one year (or 1.5 years if an extension is granted). That’s considerably faster than federal court litigation—and faster than the old reexam process, which sometimes dragged on for years.