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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

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. Below is the current state of the 8 patents asserted last Thursday in the E.D. of Virginia.

Patent No.  Reexam No.    Status Claims   Confirmed/Allowed
5,436,960   90/006,533 (Affirmed in part) 4,6,11,15,17,21,
            90/006,675                    23,28,32,34,38,
            90/007,731                    40,45,49,51,
                                          55,57,62,67,79
5,438,611  90/006,676  (Affirmed)

5,479,472  90/006,677  (Affirmed in part) 10,12,14,16,18,20,
                                          29,31,33,35,37 

5,625,670  90/006,491  (Affirmed in part) 567-570
           90/006,678
           90/007,723

5,631,946  90/006,492  (Affirmed in part) 289,296-305,307-309,
           90/006,679                     314-329,333 (NEW)

5,819,172  90/006,493   (Affirmed)
           90/006,680
           90/007,735

6,067,451  90/006,494   (Affirmed)
           90/006,681
           90/007,726

6,317,592  90/006,495   (Affirmed)
           95/000,020

Of the patents above, all claims of the ’592, ’451, ’172 and ’611 patents are currently deemed invalid, but on appeal to the CAFC. While it is possible that these rejections will be reversed, this does not appear likely.

The ‘946 is identified as including claims 289, 296-305, 307-309, 314-329, and 333. However, these claims were added during reexamination. Until printed via reexamination certificate, they do not exist. Likewise, based on the doctrine of intervening rights, an infringer cannot be held liable with respect to these claims for any infringement prior to the printing of these claims. With the CAFC decisions and printing process to come, these claims, if issued prior to expiration of the ‘946 Patent, will have a few months of enforceability at best.

Thus, peeling back the puffery of the complaint and associated press releases, only the 35 confirmed claims pose a tangible threat to the defendants today. Yet, even here, NTP will find itself in a much different environment than was found in their case against RIM in 2003. The injunction threat that NTP wielded to such a devastating effect in the RIM case is likely off the table. Surely, NTP is seeking such in their complaint, but with the Ebay line of decisions, the game has significantly changed.

Perhaps more importantly, the portfolio will completely expire by late 2012. By the time the CAFC concludes the appeals and the injunction issue gets before the VA. judge, there may be less than one year of enforceable term left.  Irreparable damage going forward?— I think not.  Assuming any significant infringement (i.e. injury) is found relative to the confirmed claims, the vast majority of $$ will be for the 6 years prior, not prospective.  As such, the equities don’t seem to support a prospective remedy under any injunction standard, post Ebay or otherwise.

The irony here is that RIM’s long ago patent reexamination efforts were ultimately successful in defeating the lion share of NTP claims. Yet, 7 years down the road it is RIM’s competitors that will now be the ones benefiting from the decreased NTP leverage.

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