PTO May Consider § 112 Issues During Reexamination When Determining Entitlement To A Priority Claim

This article previously appeared in 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...