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PTO May Consider § 112 Issues During Reexamination When Determining Entitlement to a Priority Claim

10-1243
August 01, 2011

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Last Month at the Federal Circuit - September 2011

Judges: Gajarsa (author of NTP One), Clevenger, Moore (author of NTP Seven)

[Appealed from: Board]

On August 1, 2011, the same Federal Circuit panel issued two decisions related to the reexaminations of eight of NTP, Inc.’s (“NTP”) patents, all of which the Board found invalid. In In re NTP, Inc., No. 10-1277 (Fed. Cir. Aug. 1, 2011) (“NTP One”), the Federal Circuit affirmed the rejection of all 764 claims of U.S. Patent No. 6,317,592 (“the ’592 patent”), affirmed the Board’s holding that the PTO may consider priority in the context of a reexamination, and affirmed the Board’s construction of the claim term “destination processor.” In the other decision, In re NTP, Inc., Nos. 10-1243, -1254, -1263, -1274, -1275, -1276, -1278 (Fed. Cir. Aug. 1, 2011) ( “NTP Seven”), the Federal Circuit vacated-in-part, reversed-in-part, and remanded the case to the Board, holding that the Board’s constructions of the claim term “electronic mail message” and similar terms were overly broad. The Court also found that a certain prior art reference was a printed publication under 35 U.S.C. § 102(b).

Both In re NTP decisions relate to a family of eight patents directed to an electronic mail system that transmits an electronic mail message from an originating processor to a destination processor through a radio frequency (“RF”) data transmission network. The NTP patent family pertains to technology for transmitting e-mail messages over RF networks, e.g., cellular phone networks. The Federal Circuit previously considered this patent family when NTP sued Research In Motion, Ltd. (“RIM”) for patent infringement. See NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005). During the course of that infringement litigation, which the parties eventually settled, RIM filed the eight reexaminations that are the subject of the two In re NTP decisions. NTP One relates to the ’592 patent. NTP Seven relates to the following seven U.S. Patent Nos.: 5,436,960 (“the ’960 patent”); 5,438,611 (“the ’611 patent”); 5,479,472 (“the ’472 patent”); 5,625,670 (“the ’670 patent”); 5,631,946 (“the ’946 patent”); 5,819,172 (“the ’172 patent”); and 6,067,451 (“the ’451 patent”).

NTP One
In some embodiments of the ’592 patent-at-issue in NTP One, the electronic mail message is transmitted through the data transmission network using a gateway switch and/or an interface switch. A gateway switch stores information that it receives from an originating processor before that information is transmitted to a destination processor. An interface switch connects the gateway switch to the RF transmission network to transmit the stored information.

During reexamination of the ’592 patent, the examiner rejected all 764 claims as anticipated, obvious, lacking written description, and/or lacking enablement. The examiner found that eight prior art references anticipated or rendered obvious some or all of the claims. One of those references, U.S. Patent No. 6,219,694 (“Lazaridis”), was prior art under 35 U.S.C. § 102(e) only because the examiner concluded that the pending claims were not entitled to the earlier priority date of the parent application of the ’592 patent. Specifically, the examiner found that the written description of the parent application did not support a “destination processor” that could retransmit the contents of an electronic mail message, as claimed in the ’592 patent. NTP appealed to the Board, which rejected NTP’s argument that a destination processor could be an intermediate node device, i.e., that it could both receive and retransmit e-mail messages in the e-mail messaging system of the invention. The Board agreed with the examiner that the written description of the parent application described only a destination processor that can receive an electronic mail message. Thus, the Board held that Lazaridis anticipated all the claims of the ’592 patent. NTP appealed to the Federal Circuit, which addressed three issues related to the ’592 patent: (1) whether the Board properly construed the term “destination processor”; (2) whether priority is properly considered during reexamination; and (3) if it is, whether determining priority is appropriate in this case.

On appeal, NTP did not dispute that Lazaridis anticipates all the claims of the ’592 patent if the ’592 patent is not entitled to claim the priority date of its parent application. Instead, NTP argued that the Board erred in construing the term “destination processor.” Under NTP’s proposed construction, the written description of the parent application would support the claimed functions of the destination processor and thus entitle the ’592 patent to claim an earlier priority date. NTP also argued that the PTO generally erred by considering the ’592 patent’s priority claim during reexamination proceedings.

The Federal Circuit first gave the term “destination processor” its broadest reasonable interpretation consistent with the specification, reviewing the PTO’s claim construction de novo. The Court affirmed the Board’s construction of “destination processor” because it “is legally correct and is reasonable in view of the written description and how the written description would be interpreted by one of ordinary skill in the art.” NTP One slip op. at 9.

The Federal Circuit also affirmed the PTO’s consideration of the ’592 patent’s priority claim during reexamination. The Court explained that, in the reexamination context, nothing in 35 U.S.C. §§ 301 et seq. entitles a patentee to a claim of right to its earliest priority date. Thus, the Court held that, during reexamination as in initial examination, a patentee must prove entitlement to an earlier priority date. Finding “no statutory limitation during a reexamination proceeding prohibiting the examiner from conducting a priority analysis” and declining to strip the examiner “of a critical legal tool needed in performing a proper reexamination,” the Court affirmed the PTO’s decision to analyze priority during reexamination. Id. at 15.

The Federal Circuit also concluded that the Board properly determined priority in this case. In so doing, the Court reminded that Congress amended 35 U.S.C. § 303(a) in 2002 to explain that “[t]he existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the [PTO] or considered by the [PTO].” Id. at 16 (first alteration in original) (citation omitted). Thus, the Court reminded that there is no presumption that the examiner considered whether the written description of the parent application supports the claims of the ’592 patent simply because the MPEP requires it. Whether the examiner actually considered this issue can only be determined by reviewing the prosecution history, which the Court found did not support NTP’s position. Accordingly, the Federal Circuit affirmed the Board’s determination of priority.

NTP Seven
The seven patents-at-issue in NTP Seven share substantially identical specifications. The patents are directed to a system for sending information from an originating processor to a destination processor using an RF receiver as an intermediary. The Federal Circuit addressed four issues that NTP raised in seven related appeals: (1) whether the Board properly construed the terms “electronic mail message” and “electronic mail system”; (2) whether the Board erred when it found that NTP could not antedate several references under 37 C.F.R. § 1.131; (3) whether a particular reference cited by the reexamination requester, called “Telenor,” qualifies as a printed publication under 35 U.S.C. § 102(b); and (4) whether the Board properly rejected NTP’s patent claims based on various prior art references.

First, the Federal Circuit reviewed de novo the Board’s construction of “electronic mail” or “electronic mail message” and “electronic mail system,” giving the terms their broadest reasonable construction consistent with the specification. For the claim terms “electronic mail” or “electronic mail message,” the Court concluded that the broadest reasonable construction of these terms is “a message that has a destination address and the capability for entry of message content, an identification of an originating processor, and a subject.” NTP Seven slip op. at 9. With respect to the term “electronic mail system,” the Court held that the broadest reasonable construction is the construction the Court provided in the previous RIM litigation. Accordingly, the Court vacated the Board’s decisions as to the invalidity of the patents-in-suit and remanded to the Board to apply the correct claim constructions to the prior art.

Next, the Federal Circuit considered the Board’s finding that NTP could not antedate several references using affidavits that NTP submitted under 37 C.F.R. § 1.131. Section 1.131 allows a party to antedate a reference based on prior reduction to practice by presenting evidence of the actual reduction to practice of the invention prior to the effective date of the reference, which is typically an affidavit of the inventor accompanied by corroborating evidence. The critical date for the prior art that NTP sought to antedate was October 29, 1990. NTP submitted inventor affidavits alleging reduction to practice prior to that date, along with allegedly corroborating evidence.

The Court explained that it “does not reweigh evidence [of reduction to practice] on appeal, but rather determines whether substantial evidence supports the Board’s fact findings.” Id. at 18. The Court concluded that substantial evidence supported the Board’s findings that NTP’s documents do not evidence a reduction to practice prior to the critical date and that the allegedly corroborative evidence did not corroborate the testimony of the inventors, who also had an interest in the outcome of the reexaminations.

The Federal Circuit next considered whether the “Telenor” reference is a printed publication under 35 U.S.C. § 102(b). The reexamination requester located Telenor in the library of the Norwegian University of Science and Technology and submitted the reference to the PTO. The copies of Telenor submitted to the PTO indicate that they were received and cataloged more than a year before the critical date of NTP’s patents. NTP argued that the Telenor document was not authentic or reasonably accessible to those of skill in the art, and thus, the Board erred in using it in its invalidity analysis as a “printed publication” under § 102(b).

With regard to the authenticity of the Telenor documents, the Federal Circuit held that substantial evidence supported the Board’s finding that the Telenor documents are authentic. The Court, as it did in In re Hall, 781 F.2d 897 (Fed. Cir. 1986), relied on competent evidence of general library practice to establish an approximate time when a document became available. Here, a letter from the director of the library extensively discussed the library’s cataloging practices. The Court also agreed with the Board that the Telenor reference was reasonably accessible because the subject matter categories assigned to Telenor by the library, i.e. “computer networks” and “communication protocols,” would have allowed one of ordinary skill in the art exercising reasonable diligence to find the reference.

The Federal Circuit next considered four specific prior art rejections, including one based on the Telenor reference, that did not depend on the claim constructions being remanded to the Board. The Court reversed one of the Board’s obviousness rejections because it was based on improper hindsight reasoning, reversed another obviousness rejection because the combination was insufficient in scope, and affirmed a third obviousness rejection. With regard to the Telenor reference, NTP argued that Telenor “does not enable one with ordinary skill in the art to build a system for transmission of originated information from an RF information transmission network to an RF receiver.” NTP Seven slip op. at 34. The Court disagreed, concluding that Telenor is a sufficiently enabling disclosure as a matter of law. The Court explained, “Simply because Telenor did not include every possible implementation does not mean one of ordinary skill in the art would not recognize the description as enabled.” Id. at 35. The Court reversed the Board’s anticipation decision with respect to certain claims containing limitations that the Court found Telenor does not disclose, but affirmed the Board’s invalidity decision in other respects.

Finally, the Federal Circuit reviewed various concessions that NTP made in its appeal brief and ruled that NTP may not reargue those points on remand. Given that it raised the issues but then conceded them, the Court bound NTP by the concessions.

Summary authored by Daniel A. Lev, Esq.