Case study: Using a scanner to email a document
In this short case study, we show how AmberScope could find a relevant patent apparently missed by the patent examiner in less than one minute.
Do you know anybody who might scan and email documents? Might even do it yourself?
Arstechnica recently reported on “Project Paperless ”, a group that had been* asserting a patent against smaller companies in the United States, that claimed to own a patent on the process for using a scanner to scan and email a document. This is a great read and highly recommended, especially if you are the recipient of a letter from Project Paperless or any other companies asserting this patent (further information on Project Paperless, and the attorney firm ).
Hard to believe? Well, Project Paperless (or the current owners of this patent, see below) is correct in that there is a granted US patent US7986426, (‘426), that appears to cover just that (along with US patents US7477410, and US6185590, and there is a patent pending).
The first claim of patent ‘426 covers:
A computer data management system including at least one of an electronic image, graphics and document management system capable of transmitting at least one of an electronic image, electronic graphics and electronic document to a plurality of external destinations including one or more of external devices and applications responsively connectable to at least one of locally and via Internet, comprising:
at least one scanner, digital copier or other multifunction peripheral capable of rendering at least one of said electronic image, electronic graphics and electronic document;
at least one memory storing a plurality of interface protocols for interfacing and communicating;
at least one processor responsively connectable to said at least one memory, and implementing the plurality of interface protocols as a software application for interfacing and communicating with the plurality of external destinations including the one or more of the external devices and applications,
wherein the computer data management system includes integration of at least one of said electronic image, electronic graphics and electronic document using software so that said electronic image, electronic graphics and electronic document gets seamlessly replicated and transmitted to at least one of said plurality of external destinations.
Is this patent novel?
AmberScope is a patent search tool that can said lawyers and the clients to identify prior art that may invalidate this patent (and which has its listed filing date of December 2008, but an earliest listed priority date of October 1996, as do the other patents listed)
AmberScope works by displaying patents either directly or indirectly connnected to a patent of interest. In this case, we enter the patent number US7986426 into an AmberScope search box.
This picture shows the title details for the patent we started with, US7986426, and all of the patents directly connected to this. Each of the patents in this case that is directly connected to the ‘426 patent is a backward citation.
And by moving the mouse (within AmberScope) over the other dots, the title boxes for these patents opens up, for example as shown in the image below.
And when this patent is reviewed in detail (just select the “Details ” button in the title box, and a second window showing the patent details in Google patent opens up), it does not appear to directly disclose the ‘486 patent. Which is not surprising — if it did directly disclose the ‘486 patent, the ‘486 patent might not be granted.
However what we also see in the above pictures are greyed out patents. These are what we call ‘ghost patents’, and refer to patents that are:
- connected by forward or backward citations to patents connected to the patent we started with, ii.e the ‘486 patent, and;
- highly rated by our AmberScore patent rating system, which measures the connectedness of a patent, and;
- generally connected to other patents connected to the starting patent.
Again, by moving a mouse over this patents in the on-screen version of AmberScope, the title box opens up for these.
And these ghost patents includes US5513126, also owned by Xerox, as shown below.
This Xerox patent covers:
A method for a sender to automatically distribute information to a receiver on a network using devices (such as printers and facsimile machines) and communication channels (such as electronic mail) defined in a receiver profile
as described in the picture below:
And in my mind, looks pretty relevant as prior art to the ‘486 patent. And for the record, this patent was filed in October 1993, and published in the US in April 1996 (and in Japan as JP7177158 in July 1995, i.e. 13 years before the 2008 filing date of US7986426, and over 12 months prior to the earliest listed priority date of 18 October 1996).
And that was pretty easy wasn’t it? And only took about one minute in total.
Of course, we could keep going and look at other patents connected to either the ‘486 patent or the Xerox patents, or even to other patents connected to either patent. And if I was trying to invalidate the ‘486 patent, this is exactly what I would do. But for the rest of us, this very simpl esearch demonstates just what is possible with AmberScope - given a spare minute or two.
An assignment filed in September 2012 assigned the ownership of US7986426 and the other “Project Paperless” patents listed above to MPHJ Technology Investments, a Deleware Corporation. It is not known what the relationship is between MPHJ Investments and Project Paperless.