Differences between a provisional patent application and a nonprovisional application claiming priority to the provisional application may inform claim construction, following the Federal Circuit’s recent decision in MPHJ Tech v. Ricoh. In MPHJ Tech, the Federal Circuit affirmed an inter partes review decision in which the Patent and Trademark Appeal Board (PTAB) found claims of a patent held by MPHJ invalid on grounds of anticipation and obviousness. The patent at issue, U.S. Patent No. 8,488,173, describes a “virtual copier” that replicates an image into other devices, applications or the internet with the press of a “Go” button.
On appeal, MPHJ argued that the PTAB erred in adopting an overly broad construction of the claims, leading to a finding of anticipation and obviousness. Specifically, MPHJ asserted that the claims should be more narrowly construed as requiring a one-step operation without human intervention, effectively distinguishing the claims from the prior art. MPHJ drew support for the narrower construction from statements in its provisional application that allegedly “expressly limited the scope of the invention to a one-step copying and sending process.” However, the identified statements in the provisional application were omitted from the nonprovisional application. Continue Reading