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The "using a scanner to send documents" patent - and its prior art search

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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 associated with it, is found here).

Hard to believe? Well, Project Paperless is correct is that there is a granted US patent, US7986426 ('426), that appears to cover just that (along with US patents US7477410, US6771381 and US6185590, and there is a patent pending). The first claim of patent  '426 covers

1. 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 they assist 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)

As previously discussed, 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). 

The Xerox patent is doubly useful as it is connected to 351 other patents, many of which may be in the same area, as shown in the 'more' box below. Pressing this button can help bring these patents up.



The AmberScope patent network when refocussed on this patent looks like this:



351 patents looks a lot to go through, but this is easy to manage in practice. For example, using the filing year filter, we can hide all patents filed after 1996.



Which makes the numbers of patents much more manageable. There is also the option of the 'Next" button, which systematically opens up patent title boxes in this network, in the order of AmberScore value.



By doing so, the following patents of potential relevance come up:

  • US6020980 To MCI Communications, which covers A system and method is provided for delivering facsimile messages to electronic mail addresses as object files attached to or inserted within e-mail messages, and was filed in September 1996.
  • US5800980 to OptimaDirect, which covers A computer system for creating and managing a database of communication recipients which processes queries and otherwise operates in accordance with user commands to perform telemarketing, mass mailing, direct mailing and other communication functions, and was filed in May 1996.
  • US6177934 to Canon, which covers A system enables the reading characteristic of an image reader in a network to be recognized by a host computer. The SP server device transfers the reading characteristics of a plurality of scanner printers to a designated client host computer and through a network, and was filed in January 1994.
  • US7898675 to NetFax Development, which covers A method and apparatus for transmitting class 1, 2, or 3 fax image data streams over Internet Global Area Networks, and was filed November 1995.

And we could keep searching, but this is just a sample of how easy it can be to search for patents with AmberScope.

This AmberScope search strategy is shown in the image below.



Interesting in trying AmberScope for yourself? Take advantage of our free beta trial - simply register your details at, and start using it.

* Note - 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. 

 March 2013 update - some of the images shown above feature quite crowded patent landscapes. Thanks to an update in AmberScope introduced in February 2013, the same search would show a less crowded landscape which would be easier to navigate and faster to load - but still produce the same outcomes. 

Mike Lloyd is a IP management consultant who uses the patent analysis tools developed by Ambercite to provide patent analytics services to clients of Griffith Hack, and to assist Ambercite to further develop these tools. Mike has written a number of blogs on the use of Ambercite tools, and has presented on the use of Ambercite tools to conferences in the US, Europe, Singapore and Australia.

The contents of this blog are the personal opinion of Mike Lloyd, but are intended to showcase some of the analysis capability of Griffith Hack. Griffith Hack can further extend this capability with the support of a wide range of professionals with expertise in patent drafting and prosecution, searching, licensing, litigation and valuation, and with this expertise across the full range of engineering and life sciences.


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