Project Paperless LLC says: If you use a scanner, printer, or copier that scans documents to email then you must pay us a licensing fee of $1,000 per employee.
Project Paperless, claims their patent: “covers the Defendants’ ability to scan a document into an email attachment” – Complaint filed Jan 2012 in federal court against UAV Communications.
Are Project Paperless LLC’s Patents Valid?
INVENTIONS MUST BE NOVEL
For a patent to be valid it must be both novel and non-obvious. According to the United States Code, U.S.C 35 § 102: A Person shall be entitled to a patent unless: the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for the patent. Novelty means the material elements of the invention must not be in use (in the US), or described in any publication anywhere. The term prior art is used to describe any publicly available information describing the invention in such things as prior patents, books, articles, technical journals. If prior art is found after an invention has been patented, that may be grounds for the Patent Office to revoke or invalidate the patent.
Did Laurence C Klein invent the network scanner or “virtual copier” as he calls it? Is there documented prior art?
According to US Patent #5,764,866, owned by Ricoh and originally based on a 1995 patent (three years prior to Klein’s first patent application), Yoshio Maniwa describes “A device for scanning an image to create image data to be transmitted to a network to which the device is connected. The scanning device includes an operation panel for selecting each of settings of scan conditions, a scan unit for scanning at least one image to create image data according to the settings of scan conditions, a memory unit for storing the image data, and a network-interface unit for sending the image data stored in the memory unit to the network.”
Or this Xerox patent application from 2002 which describes: “…a network-based input scanning system, wherein a sender scanning a hard-copy document at a scanner sends the resulting image data to an electronic mail address, the scanner appends an electronic mail address of the sender in the “From:” space of the electronic mail message…” This predates Klein’s 2004 patent by two years.
There are many other references still to be found and we have not yet performed an exhaustive prior art search. However, as we find additional references like these we’ll be posting them here.
INVENTIONS MUST BE NON-OBVIOUS
Given that a person skilled in the state of the art was trying to solve a particular problem, and given the prior art, does the inventor’s solution to the problem represent something that is non-obvious. So, for example, given that the Ricoh 1995 patent claims a device for scanning an image and sending it to a network, would it have been obvious that one of the network destinations could be an email attachment? Would it have been obvious for the scanner to have some sort of a “GO” button – a way to initiate the scan and send the email? How else would you have done it?
By the way, the SMTP protocol, which is how email is sent over the Internet, was already in widespread use in the 1980s.
Do These Patents Even Make Sense?
Here is an excerpt from some of the jabberwocky contained in these patents. This is from the 410 patent on page 47 out of 92, under the title “Summary of the Invention”:
My solution starts out with a definition of a component that can sustain the feature/function requirements of any API. In other words, the interface of a generic component can be defined such that the features and functions of virtually any API can be re-implemented within its bounds. The two known end-points are, for example, the “C”-level API from its original state into the generic interface defined by the topmost layer.
Don’t feel bad if this makes no sense to you. We’ve shown this to several very smart computer scientists – some of whom are university professors. This makes little sense even to them. Imagine the poor patent clerk with a queue of hundreds of patents waiting for approval. This sort of gobbledygook goes on for pages and pages.
Even more ludicrous are 45 pages of diagrams. For example, here’s diagram 17 from page 13, which Klein calls: an illustration of an exemplary memory medium:
Much of this patent seems to be irrelevant nonsense – like the floppy disk and the generic API components. In order to defend against a patent infringement suit, it’s necessary to pay patent attorneys and experts to analyze the 92 pages of the patent, determine what is relevant and how to show that the patent is not valid. A smart lawyer like Steven G. Hill knows that convincing a lay jury of anything technical comes down to the presentation and expert testimony in the case. Because many of the clauses in this patent comprise sentences that seem to be completely devoid of meaning, they can be interpreted to mean whatever someone wants them to mean. So defending against this patent is an expensive crap shoot for the defendant. Is it any wonder that many of the small businesses Hill has gone after have paid his demands?
THE UGLY DETAILS
We’ve spared you from the ugly details up to now. But if you want to see some really bad writing – read the actual patents yourself. These patents have never been tested in court. Check them out yourself and see what you think. There are two links for each patent. One is to the online version at the US Patent office. The other is to download the actual patent. Enjoy!
US Patent 6771381
This is the original patent, filed in November of 1999 by Laurence C Klein of Silver Spring, Md, and granted in 2004. Later patents reference this one and include it by reference.
US Patent 7477410
Online Summary USPTO Download PDF
This patent was filed in 2004 and issued in January of 2009. It was filed by Laurence C Klein of Silver Spring, Md., and is a continuation of the earlier 381 patent. Renaissance Group IP Holdings purchased it in early 2011 and later that year it was transferred to Project Paperless LLC.
US Patent 7986426