Silence Not Golden with Provisional Application, CAFC says

By: John Montgomery and David Madio


The United States Court of Appeals for the Federal Circuit (CAFC) provides guidance on when a provisional application can be used in patent claim construction.  The split decision highlights the importance of the specification and the relevance of a provisional application in claim construction and subsequent determination of the validity of the claims.  The different views might be beneficially considered when converting a provisional to a non-provisional patent application.

On February 13, 2017, the CAFC decided MPHJ Technology Investments, LLC (“Appellant”) v. Ricoh Americas Corporation, Xerox Corporation, Lexmark International, Inc. (“Appellees”), an appeal from the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) in an Inter Partes Review (IPR) brought by the Appellees.  The invalidity of the patent claims, over prior art references, was maintained.  The claims could not be saved, as Appellant argued, by specifically limiting the scope of the patent claims according to limitations in the provisional application that were not recited in the resulting patent.  All three judges on the panel of the CAFC confirmed that legal precedent for claim construction allows consideration of the disclosure in a provisional application.  The majority considered that the omission in the patent of certain limiting language found in the provisional application would indicate that the claims were not intended to include those limitations.  On that basis, the broadest reasonable interpretation of the patent claims was for an invention sufficiently broad to be anticipated (or, alternatively, to be made obvious) by the prior art.  The dissent asserted that incorporation by reference included all the provisional limitations for consideration in claim construction and the mere omission did not indicate that the limiting language should be disregarded.  The CAFC split decision highlights the importance of the specification and the relevance of a provisional application in claim construction and subsequent determination of the validity of the claims.


The patent in question is MPHJ’s U.S. Patent No. 8,488,173 (“the Patent”), claiming a “Virtual Copier” (“VC”).  The purpose of the VC, as stated in the Patent, is “to enable a typical PC user to add electronic paper processing to their existing business process.”  The Patent includes both system claims and method claims.  The VC “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.”  The scanning device could be a scanner, digital copier, or other multifunction peripheral device, such as a FAX machine.  According to the Appellant, a key feature of the invention is the “GO Button,” which enables, in a single-step operation, both the rendering of an image and its transmission to an application, a file server, or another device where the image gets seamlessly replicated.

The Appellees petitioned the USPTO to review the validity of the Patent.  An IPR was instituted, and the PTAB found all claims of the Patent to be invalid.  Specifically, the PTAB found that all the claims were anticipated by the Xerox Network Systems Architecture General Information Manual (“XNS”) and the XNS features in Xerox 150 Graphic Input Station Operator and Reference Manual (“GIS 150”).  The PTAB also found that all the claims were anticipated by U.S. Patent No. 5,513,126 (“Harkins”) and/or obvious in view of the combination of Harkins and U.S. Patent No. 5,818,603 (“Motoyama”).

Subsequently, MPHJ appealed the PTAB decision to the CAFC.  Circuit Judges Newman, Lourie and O’Malley reviewed the decision.  In the majority opinion filed by Judge Newman, the court affirmed the PTAB determination regarding anticipation by both XNS and Harkin, having reviewed independent claim 1 (relating to the system) and independent claim 4 (relating to the method) as representative of the claims.  The CAFC did not rule regarding obviousness, having affirmed the PTAB’s determination regarding anticipation.

The majority opinion indicates that the omission of limiting or clarifying language of the provisional application was omitted from the patent.  There was also no statement or suggestion of any intent to limit the claims according to the terms of the provisional application.  It was, therefore, reasonable for the PTAB to conclude that the resulting claims should not be limited by the terms of the provisional application.  The broadly constructed claims were anticipated by the prior art.  The PTAB’s invalidation of all claims was confirmed.

Judge O’Malley, using different reasoning, concurred with the majority regarding anticipation of the system claims by XNS, but not the method claims.  Further, O’Malley finds that the claims are not anticipated by Harkin and not made obvious by the combination of Harkin and Motoyama.

The dissenting opinion states that because the entire provisional application was formally incorporated by reference into the non-provisional application (a typical practice among patent practitioners), the patent claims should be interpreted in light of the instructive limitations in the provisional application, even though the same limiting language was not fully reproduced in the non-provisional specification.  It would not be reasonable for the PTAB to construe the claims more broadly.  The dissent nevertheless concluded that narrowly construed system claims would have been anticipated by the prior art.  The process claim would have been sufficiently limited by consideration of limitations in the provisional application to avoid anticipation and to avoid obviousness and would have been found to be valid.

Claim Construction

The case essentially turns on whether the Patent teaches a single-step operation for rendering and transmitting an image.  Appellant argued that the terms “interfacing” and “GO button” represent a single-step operation.  Judge O’Malley concurred.  The PTAB and the CAFC majority disagreed.  The difference arises from disagreement on claim construction and the role of Provisional Application No. 60/108,798 (“the Provisional”), which is included in the Patent by reference.

The PTAB construed “interfacing” to mean “making a direct or indirect connection between two elements so they can work with each other or exchange information.”  The Appellant argued that “interfacing” requires direct single-step transfer from the input device (e.g., scanner) to the destination (e.g., email or Internet).  The Appellant contended that the system is direct because it “excludes additional user intervention beyond initiating the process.”


Both the majority and the dissent agree a provisional application can provide guidance as to the claim interpretation and construction of a resulting patent.  The disagreement is what guidance is provided by the omission of potentially clarifying “provisional” language from the patent.  In appropriate cases, an applicant might control the determination of intended scope of the patent claim language by providing a clear explanation of the intended effect of omitting language used in the provisional application.