Incorporation By Reference Used To Arrive At BRI Claim Construction

Resolving what was primarily a broadest reasonable interpretation (BRI) claim construction issue, the US Court of Appeals for the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) decision that invalidated claims of a patent directed to scanning a document and sending it to an email address as a PDF file. MPHJ Technology Investments, LLC, v. Ricoh Americas Corporation, et al., Case No. 16-1243 (Fed. Cir., Feb. 13, 2017) (Newman, J) (O'Malley, J, dissenting in part). 

Patent owner MPHJ argued that the PTAB wrongly construed the claims during an inter parte review (IPR) proceeding to mean that the scanning and emailing steps could be performed as separate steps. In particular, MPHJ 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, MPHJ cited statements in one of its