In re NTP (CAFC 2010-1243 etc.; 2010-1277) precedential; Judges Gajarsa, Clevenger, and Moore (author)

This report covers two CAFC appeals, one for seven patents that were born, lived, and died, under the same roof (5,436,960; 5,438,611; 5,479,472; 5,625,670; 5,631,946; 5,819,172; and 6,067,451); the other for all 764 claims of 6,317,592.

Reexamination proceedings, governed by 35 U.S.C. §§ 301 et seq., are intended to "permit any party to petition the [PTO] to review the efficacy of a patent, following its issuance, on the basis of new information about preexisting technology that may have escaped review at the time of the initial examination." H.R. No. 66-1307, 96th Cong., 2d Sess. (1980), 3-4. The scope of reexamination proceedings is limited to "substantial new question[s] of patentability," 35 U.S.C. § 303(a), which are questions that have not previously been considered by the PTO, Swanson, 540 F.3d at 1379. These new considerations must be based only on "prior art consisting of patents or printed publications." 35 U.S.C. § 301; see id. § 302. Thus, other challenges to the patentability of original claims--such as qualification as patentable subject matter under § 101 or satisfaction of the written description and enablement requirements of § 112--may not be raised in reexamination proceedings. See id. § 301; 37 C.F.R. §§ 1.552(c), 1.906(c). Moreover, during reexamination, the patent claims no longer carry the statutory presumption of validity. In re Etter, 756 F.2d 852, 858 (Fed. Cir. 1985) (en banc).

Reexamination proceedings are intended to have the same focus as original prosecution, Etter, 756 F.2d at 857, and are procedurally similar, see 35 U.S.C. §§ 305, 314. During reexamination, the examiner reviews the claims in view of various prior art patents and printed publications. See id. § 301. If the examiner believes that a reference invalidates one or more claims of the patent, he or she issues an office action to the patentee explaining the reasons a reference is invalidating. See 37 C.F.R. § 1.104. In order to maintain those claims, the patentee must then traverse the examiner's arguments. See id. §§ 1.111, 1.550. An argument can be made that the patent is entitled to a priority date that antedates the asserted reference.

The Nearly Hung Seven

The parties agree that the patents involved in this appeal share substantially identical specifications. 2010- 1243 Appellant's Br. 2; 2010-1243 Dir. Br. vi. The patents describe a system for sending information (such as electronic mail) from an originating processor (i.e., a personal computer) to a destination processor (i.e., a mobile computer) using an intermediary, an RF receiver. '960 patent col.18 ll.32-39. Prior art systems such as the one shown in figure 1 of the '960 patent required a portable computer to connect to a public switched phone line in order to access electronic messages. Because it was difficult to locate a telephone jack, the mobile computer user was often unable to receive electronic mail. Id. col.3 ll.62-66. The inventors set out to solve this problem by introducing a Radio Frequency (RF) network 302.

Claim Construction

The claim terms at issue in these appeals are "electronic mail" or "electronic mail message" and "electronic mail system." In reexamination, "claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quotation omitted). Thus, while reviewing claim construction de novo, Singh v. Brake, 317 F.3d 1334, 1340 (Fed. Cir. 2003), this court must determine whether the Board's construction of the term was reasonable, In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997).

The term "electronic mail" or "electronic mail message" appears in all eight patents-in-suit. The Board construed this term to mean a formatted text message having "a destination address identifying the persons, places, or objects to which the message is directed." 2010-1263 J.A. 20. NTP asserts that this construction is incorrect and proposes that "electronic mail message" means a message that has "(1) the destination address; (2) an identification of the originating processor; (3) the subject of the message and (4) the message or message text with the clear result being that email elements (1) and (2) require a communication system to have both originating and destination processors." 2010-1254 Appellant's Br. 29-30.

The BPAI is shown once again to be randomly competent (only competent at the simplest tasks; otherwise largely incompetent). Either that, or incorrigibly corrupt. Take your pick, but it's really more than a bit of both.

The Board's construction only required the entry of a destination address. This construction, however, ignores the claim language and evidence of the understanding of a person of ordinary skill in the art. The claim language clearly requires that, in addition to a destination address, electronic mail messages have the capability for entry of message content, such as text or an attachment.

The Board construed that an "electronic mail system" only needed a single processor, not one for each mail server. In other words, the central concept of networking eluded the BPAI.

Next, the Board construed "electronic mail system" to mean "[a] processor placing an electronic mail message on a transmission mechanism capable of delivering the message to the intended recipient . . . ." 2010-1263 J.A. 19. The Board's construction "does not require a plurality of processors." Id.

The claims themselves require a "plurality" of processors in an electronic mail system.

So, the CAFC gives with the one hand, on something so simple that the CAFC's own corruption would be horribly exposed otherwise. Having been basked, the goose is then cooked.

Swearing Behind

NTP tried to swear behind its earliest filing date with affidavits and correspondence. This sort of hornswoggle is why the rest of the world has a first-to-file system.

A party seeking to antedate a reference based on reduction to practice must present evidence of the actual reduction to practice of the invention prior to the effective date of the reference. 37 C.F.R. § 1.131(b). An inventor cannot rely on uncorroborated testimony to establish a prior invention date. Id. It has long been the case that an inventor's allegations of earlier invention alone are insufficient - an alleged date of invention must be corroborated. Medichem S.A. v. Rolabo, S.L., 437 F.3d 1157, 1170 (Fed. Cir. 2006); Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998). "[E]vidence is assigned probative value and collectively weighed to determine whether reduction to practice has been achieved." Medichem, 437 F.3d at 1170. "Sufficiency of corroboration is determined by using a 'rule of reason' analysis, under which all pertinent evidence is examined when determining the credibility of an inventor's testimony." Id.

The Board found that this evidence did not corroborate the testimony of the inventors.

This court does not reweigh evidence on appeal, but rather determines whether substantial evidence supports the Board's fact findings. We agree with the PTO that substantial evidence supports the Board's finding that these documents do not evidence a reduction to practice prior to the critical date.

The later date lets in prior art that would otherwise be excluded. On to the invalidating prior art.

Prior Art Reference / Invalidity

The Board affirmed rejections of claims in several of the patents at issue based on Telenor. In addition to arguing that Telenor does not anticipate the claims, NTP argued to the Board that Telenor is not a "printed publication" under 35 U.S.C. § 102(b). It based this on two distinct arguments: that Telenor is not authentic and that it was not reasonably accessible.

Telenor came to the PTO by way of the third-party reexamination requester. The requester apparently located the documents in the Norwegian University of Science and Technology (Library) in Trondheim, Norway. Each of the volumes of Telenor was marked as received and catalogued on a date more than one year prior to the critical date of the patents at issue.

Consistent with the approach of our sister circuits, we hold that the authenticity of a document is a question of fact. See, e.g., United States v. Vidacak, 553 F.3d 344, 349 (4th Cir. 2009); United States v. Weiland, 420 F.3d 1062, 1071 n.6 (9th Cir. 2005); United States v. Carson, 969 F.2d 1480, 1500 (3d Cir. 2000). Therefore, we review the Board's fact-findings regarding authenticity for substantial evidence.

We hold that substantial evidence supports the Board's finding that the Telenor documents are authentic.

Whether a reference is publicly accessible is a question of fact that we review for substantial evidence. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004) (holding that whether a reference is publicly accessible is based on the "facts and circumstances surrounding the reference's disclosure to members of the public"). A reference is publicly available if it was "disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it." Kyocera Wireless Corp. v. Int'l Trade Comm'n, 545 F.3d 1340, 1350 (Fed. Cir. 2008).

The Board's determination that Telenor was publicly accessible is supported by substantial evidence.

Telnor's invalidating power was then questioned by NTP. The CAFC wasn't going to let the noose slip that easy.

A patent claim "cannot be anticipated by a prior art reference if the allegedly anticipatory [disclosure] cited as prior art [is] not enabled." Rasmusson v. Smithkline Beecham Corp., 413 F.3d 1318, 1325 (Fed. Cir. 2005) (quoting Elan Pharm, Inc. v. Mayo Found. for Med. Educ. & Research, 346 F.3d 1051, 1054 (Fed. Cir. 2003)). Although anticipation is a question of fact, Baxter, 952 F.2d at 390, whether a prior art reference is enabling is a question of law with underlying factual inquiries. In re Gleave, 560 F.3d 1331, 1335 (Fed. Cir. 2009).

We agree with the PTO that Telenor is a sufficiently enabling disclosure as a matter of law. 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. It is sufficient that Telenor disclosed a protocol that one of ordinary skill in the art would be able to use to implement the disclosed system.

But the examiner was not bright enough to reject over the shotgun of obviousness, instead settling for a rifle of anticipation. The bullet failed to kill.

While the PTO argues that Telenor teaches something equivalent to the use of packets, the reference does not disclose that a single packet may contain originated information from a plurality of originating processors. Thus, the Board's finding that Telenor teaches this claim limitation is not supported by substantial evidence. Keeping in mind that these are anticipation, not obviousness rejections, the failure to disclose this claim element requires reversal of these rejections. It is axiomatic that for anticipation, each and every claim limitation must be explicitly or inherently disclosed in the prior art. King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010); Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784, 797 (Fed. Cir. 2010); Verizon Servs. Corp. v. Cox Fibernet Virginia, Inc., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010); Iovate Health Sci., Inc. v. Bio-engineered Supplements & Nutrition, Inc., 586 F.3d 1376, 1380 (Fed. Cir. 2009).

A combination of other prior art references were used to invalidate some claims. What was not copasetic, but is very common at the PTO, as any prosecutor can tell you, is the zeal with which the patent office illicitly applies prior art.

The Board improperly relied on hindsight reasoning to piece together elements to arrive at the claimed invention. "Care must be taken to avoid hindsight reconstruction by using 'the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.'" Grain Processing Corp. v. American-Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)).

Other prior art was successfully applied to kill intended claims.

Finally, the CAFC reminded that NTP had made concessions, nails for the coffins, which could not be unhammered.

The nearly-hung seven matter was vacated-in-part, reversed-in-part, and remanded.

The partial win for NTP means nothing. These patents will never cop damages from a court ever again - unenforceable.

The More-Than-Merely-Most-Sincerely Hung 6,317,592

NTP appeals three specific issues: (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. After considering all of the issues, for the reasons discussed below, we affirm the Board's decision.

'592 DOA @ CAFC, and stayed that way.