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Archive for July 12th, 2010

NTP’s Last Stand: The Remnants of Patent Reexamination

Posted On: Jul. 12, 2010   By: Scott A. McKeown
Topics: Reexamination

Smoke-N-Mirrors_whiteThe Death Rattle of a Troll

As we detailed previously, the NTP patent portfolio has been eviscerated in patent reexamination with over 2200 claims rejected across 8 patents.  All 8 patents are now on appeal to the CAFC, based on my reading of the rejections, it appears unlikely that NTP will be successful in reversing the applied rejections. Much of NTP’s arguments deal with the proper interpretation of claims in patent reexamination, NTP argues that the district court Markman is controlling rather than a broadest reasonable interpretation used by the USPTO. Of course, this argument has been rejected by the CAFC consistently over the years. In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007); and In re Translogic Technology, Inc., 504 F.3d 1249, 84 USPQ2d 1929 (Fed. Cir. 2007). Another substantial component of their arguments is that a certain printed publication (Telenor) was falsified, and does not in fact qualify as prior art; to date this argument has fallen on deaf ears.

As a result of the reexaminations, initiated by both the Director of the USPTO and Research in Motion (RIM), only 36 original claims were confirmed. A single one of these claims, claim 15 of the 960 patent, was held not invalid and infringed by the CAFC in the earlier RIM dispute (method claims 32 and 34 while found infringed at trial were overturned at the CAFC under 35 USC 271 (f)). So, one would expect that with roughly 2% of the earlier claim set still intact, and the entire portfolio set to expire in 2012, that NTP would quietly fade away. Yet, NTP has initiated yet another suit (complaint against Apple here) just last Thursday, perhaps in the hopes of securing further settlements prior to the final CAFC decisions. In doing so, NTP has filed a complaint referencing patents that may be canceled by the CAFC in a matter of months, and has referenced claims added in patent reexamination that do not yet exist as an enforceable property right. Read the rest of this entry »