In recent months many companies have received letters notifying them that a patent may prohibit a routine office function: scanning documents and having the documents sent automatically over a local network to an email address. It sounds like something that occurs in virtually every office, and it is something that the patent owner, MPHJ Technology Investments, LLC, (“MPHJ”) wants to be paid for.
Companies on the receiving end of these letters are faced with the no-win option of forking over a hefty license fee or risking being named as a defendant in a patent infringement lawsuit. For many companies, determining if they are infringing, engaging in protracted negotiations for a license, and evaluating (and possibly challenging) the validity of the patent is simply not cost effective.
However, these companies may have some good news: Ricoh Americas Corporation and Xerox Corporation have challenged one of the asserted patents, U.S. Patent No. 7,986,426 (the ‘426 patent), by seeking inter partes review by the U.S. Patent and Trademark Office. If the petition is successful, the ‘426 patent will be invalidated by the U.S.P.T.O. Ricoh and Xerox believe the claims of the ‘426 patent were fully anticipated by various prior art references, according to a statement issued by Ricoh.
For companies that are currently in negotiations with MPHJ or one of its many licensing agents, the petition may provide them greater leverage. Waller’s intellectual property attorneys are assisting companies facing demands by MPHJ as well as other patent owners and can provide advice and representation in responding to patent related claims.