Parallel Patent Reexamination Qualifies as Newly Discovered Evidence Under Fed. R. Civ. P. 60(b)

It is well established that the USPTO utilizes different standards of evidence and claim interpretation in patent reexamination. Likewise, there is no presumption of validity in patent reexamination. For this reason, district court/ITC claim construction findings (i.e., Markman Orders) are not binding on the USPTO. In re Trans Texas Holdings Corp., 498 F.3d 1290 (Fed. Cir. 2007). Yet, the findings of the USPTO with regard to claim construction can have significant impact on the court rulings.

For example, this past January, in St. Clair Intellectual Property Consultants, Inc. v. Canon Inc., (Fed. Cir. 2011, non-precedential), the CAFC reversed a lower court claim construction ruling, based in part, on the findings of USPTO examiners in patent reexamination, explaining:

Because an examiner in reexamination can be considered one of ordinary skill in the art, his construction of the asserted claims carries significant weight.

(See the earlier discussion of this case here)

Hoping to leverage this thinking, TDM America LLC, a plaintiff of the United States Court of Federal Claims, sought to undo an earlier adverse Markman Order and summary judgment of non-infringement. TDM sought relief under Fed. R. Civ. P. 60(b) arguing that a recently concluded ex parte patent reexamination of the patent at issue constituted new evidence requiring relief from the earlier judgment. TDM argued that, as in St. Clair, the claim scope statements of the reexamination record carry significant weight, and were contrary to the court’s earlier Markman and SJ findings.

Interestingly, the court agreed that a patent reexamination that concludes after judgement does qualify as “newly discovered” evidence (citing St Clair) under Fed. R. Civ. P. 60(b)., noting:

Defendant contends that TDM’s motion also should fail because it is not based upon “newly discovered evidence.” (Def.’s Opp’n, May 24, 2011, at 22.) Specifically, Defendant asserts that the PTO’s final determinations on the `614 and `862 patents did not occur until August 31, 2010 and February 21, 2011 respectively, well after the Court’s April 27, 2010 summary judgment decision. Id. Under Rule 60(b)(2), “newly discovered evidence” must exist at the time of the Court’s original decision. Yachts America, 8 Cl. Ct. at 281. TDM counters that, although the reexamination proceedings were not complete at the time of the Court’s summary judgment decision, the facts to which the reexamination pertained were in existence before the Court’s decision. (Pl.’s Reply Mem., June 29, 2011, at 15-16.) TDM relies on a Fifth Circuit case, Chilson v. Metropolitan Transit Authority, in which the court held that an audit completed after judgment but revealing facts that existed at the time of trial constituted “newly discovered evidence.” 796 F.2d 69, 73 (5th Cir. 1986). The Court also notes that the Federal Circuit has taken judicial notice of ex parte reexamination decisions. See St. Clair Intellectual Property Consultants, Inc. v. Canon, Inc., 2011 WL 66166, at *5 n1 (Fed. Cir. Jan. 10, 2011) (“[T]his court can take judicial notice of the reexamination record.”). On the basis of these authorities, the Court will treat the ex parte proceedings as “newly discovered evidence.”

Although accepting TDM’s Rule 60(b) patent reexamination theory, the court found TDM’s allegations of contrary claim scope findings sorely lacking, and improperly focused on positions that were later reversed by the examiners.

In the 1,226-page appendix, the PTO’s examiners made many observations about the Chemfix II process and the validity of the `614 and `862 patents, but in reversing course during the proceedings, the earlier examiner observations are not consistent with the later observations. Thus, in evaluating any of the PTO examiner statements, it is important to know when the statements were made. In its motion for relief from judgment, TDM habitually cites to many of the earlier examiner comments, which were later reversed and thus carry no weight. The final PTO position is consistent with the Court’s position, and would not cause the Court to alter the outcome of the case.

Although TDM was ultimately unsuccessful, the ability to introduce a favorable reexamination record under Fed. R. Civ. P. 60(b) appears to be a viable strategy for for patentees receiving adverse judgments concurrent to a pending patent reexamination proceeding.

Inter Partes Patent Reexamination is Not Always the Best Choice

In the case of Inventio AG v. Otis Elevator Co. (SDNY), the Court found that entry of a permanent injunction was against public interest where a pending ex parte patent reexamination of the USPTO seemingly demonstrated the potential invalidity of the subject patent. Interestingly, this type of strategic, post-trial benefit of a concurrent patent reexamination is not available if the parallel patent reexamination were an inter partes patent reexamination.

That is to say, in considering the choice between ex parte and/or inter partes patent reexamination, post trial, or late stage litigation strategies must take into account the unique estoppel provisions of inter partes patent reexamination.

Of course, when implementing a patent reexamination strategy, a threshold determination is whether or not to initiate ex parte or inter partes patent reexamination, or both. This decision is very straight forward for older patents (i.e., those patents that did not mature from an application filed on or after November 29, 1999). This is because applications filed prior to the 1999 date are not eligible for inter partes patent reexamination.

Yet, as the years progress, fewer and fewer patents are outside of the inter partes date provision. So, where both options are available, which is the better option?

Like most legal inquiries, the answer is “it depends.” One factor that will greatly impact the choice between ex parte and inter partes patent reexamination is whether or not the requesting party is embroiled in a parallel infringement litigation.

Depending upon the litigation strategy, the court, and/or judge, the choice between reexamination types may vary significantly. For late stage litigations, such as the Otis “injunction hedge” strategy noted above, ex parte patent reexamination is the only viable choice. Statistically speaking, inter partes patent reexamination is more likely to lead to claim cancellation/amendment, and as such, seems the clear choice. Yet, unlike ex parte patent reexamination, inter partes patent reexamination may be “turned off” at some point by the USPTO by operation of estoppel.

Inter partes patent reexamination is subject to statutory estoppel provisions not applicable to ex parte patent reexamination. Once a final validity determination is entered (i.e., all appeals exhausted) 35 USC § 317 (b) is triggered, effectively forcing the USPTO to vacate the proceeding by operation of estoppel.

35 USC § 317 (b) provides:

(b) FINAL DECISION.- Once a final decision has been entered against a party in a civil action arising in whole or in part under section 1338 of title 28, that the party has not sustained its burden of proving the invalidity of any patent claim in suit or if a final decision in an inter partes reexamination proceeding instituted by a third-party requester is favorable to the patentability of any original or proposed amended or new claim of the patent, then neither that party nor its privies may thereafter request an inter partes reexamination of any such patent claim on the basis of issues which that party or its privies raised or could have raised in such civil action or inter partes reexamination proceeding, and an inter partes reexamination requested by that party or its privies on the basis of such issues may not thereafter be maintained by the Office, notwithstanding any other provision of this chapter. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings.

(emphasis added)

Thus, in the Otis “injunction hedge” example above, once a validity determination of the court becomes final, the USPTO would be forced to vacate any inter partes patent reexamination proceeding requested by Otis with respect to the enumerated claims of the final Court holding. See Also Sony Computer Entertainment America Inc. v. Dudas (E.D. Va 2006) (inter partes patent reexamination suspended pending CAFC appeal). Note that currently, the inter partes reexamination estoppel provisions do not apply to ITC proceedings. This will change upon enactment of the Leahy-Smith America Invents Act.

While the court may still weigh the vacated/suspended proceeding in balancing equities in the injunction hedge context, penalizing the Patentee as to an incomplete proceeding would seem inequitable. To be sure, the opportunity to appeal an incomplete, adverse reexamination result would be cut off by the USPTO.

On the other hand, an ex parte patent reexamination would continue uninterrupted by court actions, as is the case in Otis.

For additional considerations in choosing between ex parte and inter partes patent reexamination proceedings concurent to litigation, see my previous Therasense discussion and motion to stay discussion.

Inter Partes Patent Reexamination Filings Pose Challenge to Lodsys

Late Friday, Google announced that it had filed inter partes patent reexamination requests against two of the now infamous Lodsys patents, 7,222,078, and 7,620,565. Over the past few months, Lodsys has been contacting iOS and Android application developers seeking license fees, and has begun suing others to enforce their patent rights (the patents are purportedly directed to application transactions among providers and users). An infringement suit was filed against 11 defendants in Texas, including EA, Take-Two Interactive, Atari and Rovio (of Angry Birds fame).

As a licensee, Apple has attempted to intervene in the ongoing litigation arguing that app developers are covered under the terms of their license. Google, perhaps unencumbered by the contractual obligations of Apple with respect to challenging validity, has opened up a new battle front for Lodsys at the the USPTO.

As ed.com/gadgetlab/2011/08/google-android-lodsys-patent/”>explained this past Saturday at Wired.com, Google announced the filing stating that:

We’ve asked the US Patent Office to reexamine two Lodsys patents that we believe should never have been issued. . …Developers play a critical part in the Android ecosystem and Google will continue to support them. [quote attributed to Google Senior Vice President and General Counsel, Kent Walker]

So, now what?

The USPTO now has 90 days by statute to decide to order or deny patent reexamination. Roughly 95% of such requests are granted. (USPTO stats here)  So, one can expect that the reexaminations will very likely be ordered. Typically, an “office action” would be issued at the time of the Order rejecting (some or all) of the claims of the patent, and requiring a response from Lodsys within 2 months time. Thereafter, Google will be able to respond to any Lodsys submission to the USPTO.

Of course, in patent reexamination, the playing field is not nearly as favorable to patentees as a district court. For example, the USPTO applies much more liberal standards relative to that of the district courts with respect to validity and claim construction. Specifically, invalidity in a district court must be shown by “clear and convincing” evidence, whereas in the Office it is sufficient to show non-patentability by a “preponderance” of the evidence. Additionally, patents are presumed valid in court, not so at the USPTO. For these reasons, as well as for litigation strategy purposes, patent reexamination is an attractive option for litigation defendants.

What happens to ongoing litigation while patent reexamination is pending at the USPTO?

In some cases, ongoing litigation may be “stayed” pending the outcome of patent reexamination in the interests of judicial economy. However the decision to stay a case is highly dependent on the facts, and perhaps more importantly on the judge involved. In the Lodysys case (Texas case), Judge Ward of the Eastern District of Texas is presiding. Historically, Judge Ward has stayed cases 40% of the time (2008-2011) (see full stats in my prior post on this topic). So, the Google filing has the potential to completely shut down the present case. I would expect that the Texas defendants will seek a stay at some point, likely shortly after an Order (60-90 days from now).

However, even if a motion to stay is denied by Judge Ward, an advancing reexamination that includes adverse patentability findings makes later law suits more difficult to pursue. This is because one of the factors considered by a judge in staying a case is the stage of the USPTO proceeding…the closer to the end, the more attractive the stay option. So, later law suits become increasingly more difficult to pursue as a reexamination advances that includes adverse validity findings.

Needless to say, all of this assumes Google is sucessful at the USPTO. While there is no guarantee, historically, inter partes patent reexaminations have led to complete cancellations of all claims in roughly 44% of cases, and most proceedings include some claim amendments (which could potentially eliminate past damages for infringement).

Unfortunately, the reexamination proceeding will take some time. As I have discussed previously, the length of an inter partes patent reexamination, through appeal, is significant. Likewise, Lodsys has additional patents in their portfolio, and others pending. Clearly, the Lodsys threat is not going to be defeated overnight. Nevertheless, with Google funding the battle at the USPTO, a second front has opened on a much more favorable battlefield.

USPTO Post Grant Consideration Precludes “But For” Materiality

The en banc CAFC decision in Therasense has recalibrated inequitable conduct jurisprudence. The decision effectively tightened the standard that is applied in judging materiality of information underlying an inequitable conduct defense. More specifically, the Court replaced the previous “reasonable examiner” standard with a new “but for” materiality analysis. The “but for” standard defines material information as any non-cumulative information which, had it been disclosed prior to patent issuance, would have prevented the patent from issuing.

As I discussed prior to the issuance of the Therasense decision, a “but for” materiality standard applies in Walker Process antitrust claims. Earlier this year, in U.S. Rubber Recycling, Inc. v. ECORE International Inc., et al.(CDCA), the California District Court considered whether or not prior art materials could satisfy a “but for” materiality standard where the USPTO had considered the very same information in a patent reissue proceeding, and had still reissued the patent. In deciding that this information could not be material as a matter of law, the Court explained that while a USPTO proceeding cannot cure fraudulent conduct, it can be dispositive of a “but for” materiality standard and that “[b]ecause the PTO reexamines re-issuance applications as if being presented for the first time, the fact that the PTO did re-issue Defendant’s patent even with the prior art precludes Plaintiff from plausibly pleading [Walker Process].

Since the court’s initial ruling on the Walker process claim, the Therasense decision issued.  Last week, the Court considered the applicability of the same art under an inequitable conduct theory. Not surprisingly, the court found that reissuance of the patent precluded a finding of “but for” materiality as a matter of law.

The Court explained (decision here):

Defendant argues that Plaintiff cannot prove “but-for” causation because the Examiner reviewed Plaintiff’s alleged prior art and still allowed the original claims to be reissued. (Mot. 6:7-19.) The Court agrees. Out of judicial economy, the Court refrains from repeating its analysis in its Order Denying Plaintiff’s Motion to Reconsider. In the July 8, 2011, Order, the Court explained that the “PTO undoubtedly considered most, if not all, of the alleged prior art.” (Order, July 8, 2011, at 6.) The Court listed the numerous prior art alleged by Plaintiff in its Complaint and systematically showed how each prior art is listed on the face of the RE41945 or was submitted in an IDS to the PTO. (See id.) Under the Federal Circuit’s recent en banc decision in Therasense, Plaintiff must show that “the PTO would not have allowed [the] claim[s] [of the ‘723 Patent] had it been aware of the undisclosed prior art.” 2011 WL 2028255, at *11. Because the PTO in the instant action allowed the claims after the disclosure of the alleged prior art, Plaintiff cannot prove “but-for materiality.” (Order, July 8, 2011, at 6-7.)

While the Therasense decision also provided that certain egregious conduct could qualify information as de facto material, such was not the case here.  (The USPTO has since attempted to codify the Therasense decision as proposed Rules 56 and 555 to provide a “but for plus” materiality standard). Going forward, it may be that USPTO post grant proceedings play a more prominent role in assessing the merits of an inequitable conduct charge.

Patent Reform Provisions to Impact Technology Companies?

The race to the USPTO door may start very shortly for those defendants charged with infringement of a “business method patent.” 

Patent reform legislation is ostensibly poised for a September 2011 enactment.  The current version of the legislation (H.R. 1249) includes a provision entitled “Transitional Program for Covered Business Method Patents.” The provision essentially provides post grant review (as defined in the legislation) for patents that were issued prior to enactment. This provision is of a limited time, 8 years, and can only be used if actually sued or charged with infringement of a covered business method patent.

The clear intent of the author of this provision (Sen. Charles Schumer, D-N.Y) was to provide relief to the New York Banking Industry from the likes of Data Treasury. Some have gone as far as to label this provision a “bank bailout.” (note the provision in the bill excluding ATM machines as a venue tool Sec. 18(c))

The legislation defines a business method patent in fairly pliable terms, defining  “business method patents” as:

a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.

(emphasis added)

This definition would seem to overlap with the criteria used by the USPTO in classifying  inventions under Class 705.  Class 705 is widely known as the primary business method patent classification, identified as by the USPTO as follows: 

Data Processing: Financial, Business Practice, Management, or Cost/Price Determination:

Machines and methods for performing data processing or calculation operations in the:

-Practice, administration or management of an enterprise, or
-Processing of financial data, or
-Determination of the charge for goods or services

Based on the similarity between these definitions, it seems that patents falling in Class 705 will be especially susceptible to the bulk of the challenges going forward.

Interestingly, in the July 2011 Business Methods Partnership Meeting, some USPTO statistics were shared regarding the identity of the Top 10 filers of Class 705 applications between 2006-2010.

At least half of the top ten filers of Class 705 Patents are clear technology companies, including:

IBM (590 patents)
Microsoft (185 patents)
Sony (142 patents)
Hewlett-Packard (113 Patents)
Fujitsu (105 Patents).

Companies like AT&T, Oracle, Ebay, Amazon and Pitney Bowes round out the list (with only a sprinkling of companies being clear banking/financial organizations).

Thus, a provision primarily meant as a rifle shot to the heart of Data Treasury may in fact be a shotgun blast to many unsuspecting technology companies.

injunction-reexaminationFinal Patent Reexamination Result to Dissolve Injunction 

 

A defendant’s request to delay entry of a permanent injunction until reexamination concludes is more likely to be well-taken by a district court when the reexamination is near conclusion and rejecting the patent owner’s claims.  Depending on the length of time that passes before a litigant requests reexamination of a patent, either party could argue that the timing of the request supports its own interests under the four factor P.I. test and the balancing of the equities.

 

This tension played out recently in Inventio AG v. Otis Elevator Co. (SDNY)

 

In Otis, the Court found that entry of a permanent injunction was against public interest (i.e., P.I .fourth factor) where a patent reexamination existed Continue Reading Permanent Injunction Status Linked to Patent Reexamination

NTP Decision Explains Propriety of 112 Analysis in Patent Reexamination

MPEP §§ 2258 and 2658 explain that, during a reexamination proceeding, the USPTO will not analyze originally issued claim language with respect to 35 U.S.C. § 112, 1st paragraph. (It will, however, consider such issues where new claim language is introduced by amendment).

On the other hand, 35 U.S.C. § 112, 1st paragraph is considered where the patent subject to reexamination has claimed the benefit of the filing date of an earlier filed U.S. or foreign patent application.  MPEP § 2258 (I)(C). That is to say, if the parent patent does not support the claims of the child patent claims under reexamination, a substantial new question of patentability (SNQ) may be presented that is based on intervening patents or printed publications as the child patent claims under reexamination would not be entitled to the filing date of the parent. In such a case, the practical effect is that the original patent claims are analyzed under 35 U.S.C. § 112 relative to the priority application.

The challenge to the priority determination is in practice a  “back door” attack on the original patent claims’ compliance with 35 U.S.C. § 112, 1st paragraph, especially where the patent subject to reexamination is a “straight continuation” having an identical disclosure to its parent.

In last week’s NTP decisions, this strategy was blessed by the CAFC.

The court explained, the dispute between NTP and the PTO as:

NTP submits that once the patentee claims entitlement to an earlier priority date, the examiner must accept the applicant’s argument without challenge. For support, NTP relies on Patlex Corp. v. Quigg, 680 F. Supp. 33, 37 (D.D.C. 1988), where the district court stated that “the reexamination statute does not contemplate a ‘reexamination’ of the sufficiency of a disclosure. Rather, it is limited to reexamination of patentability based on prior art patents and publications.”

In holding against NTP, the court explained:

Patlex, however, does not support NTP’s argument for several reasons

.   .   .   .   .

[T]he district court precluded review of priority [in Patlex] because that issue—along with enablement—had been decided during the patent’s original prosecution. Patlex, 680 F. Supp. at 36. During the patent’s original prosecution, the examiner stated in the Reasons for Allowance that he had considered “[u]ndue breadth” and “sufficiency of the disclosure” and concluded that the written description of the great-grandparent met the enablement requirement. Id. (citations omitted)

.   .   .   .   .

When a patentee argues that its claims are entitled to the priority date of an earlier filed application, the examiner must undertake a priority analysis to determine if the patentee meets the requirements of § 120. There is no statutory limitation during a reexamination proceeding prohibiting the examiner from conducting a priority analysis. Otherwise, the examiner would be stripped of a critical legal tool needed in performing a proper reexamination. Nothing in §§ 301 et seq. prohibits an examiner from determining whether or not a priority date was properly claimed during the original examination of the application.

As most sophisticated patentees maintain continuation/divisional filings, it would seem that sophisticated third party requesters have been handed a clear avenue to challenge 112 support in patent reexamination. 

The Bio/Pharma community may find such SNQ strategies especially valuable.

CAFC Revisits “Loser Estoppel” in Patent Reexamination

While reexamination is often initiated parallel to litigation, some have relied upon reexamination in post-trial settings to get out from under injunctions and/or jury verdicts.

One of the more well known cases in this regard is In re Trans Texas Holdings Corp., 498 F.3d 1290 (Fed. Cir. 2007). In Trans Texas, the patent being reexamined was subject to an infringement suit, in which the district court had issued its claim construction ruling (in a district court opinion) as to the definition of a term. The parties ultimately reached a settlement before trial, and the district court issued an “Order of Dismissal with Prejudice.” The patent owner relied on that district court claim construction ruling in a reexamination proceeding, and argued that the Office was bound by that district court claim construction ruling, under the doctrine of issue preclusion. The Federal Circuit stated that issue preclusion could not be applied against the Office based on a district court holding in an infringement proceeding, since the Office was not a party to that earlier infringement proceeding. See Also In re Translogic Tech. Inc. (CAFC 2007)

Yesterday, the CAFC heard oral argument in the case of In re Construction Equipment. Construction appealed from a decision of the BPAI in ex parte patent reexamination that found the claims of the patent anticipated and/or obvious. Previously, the CAFC found the Construction patent not invalid on appeal from the District Court. Thereafter, the appellant pursued ex parte reexamination on some of the very same art previously considered.

During oral argument the court, sua sponte, questioned the propriety of the USPTO’s seeming dismissal of the Court’s previous validity ruling.

It is long established that the USPTO may conduct patent reexamination independent of district court proceedings. As held in Ethicon v. Quigg, 849 F.2d 1422, 1428, 7 USPQ2d 1152, 1157 (Fed. Cir. 1988) that the Office is not bound by a court’s holding of patent validity and should continue the reexamination. The Court noted that District Courts and the Office use different standards of proof in determining invalidity, and thus, on the same evidence, could quite correctly come to different conclusions. Specifically, invalidity in a District Court must be shown by “clear and convincing” evidence, whereas in the Office it is sufficient to show non-patentability by a “preponderance” of the evidence. Since the “clear and convincing” standard is harder to satisfy than the “preponderance standard,” a court’s holding of patent validity is not controlling. If sufficient reasons are present, claims held valid by the court may be rejected in reexamination.

Still, the Court questioned the fairness of allowing the same losing party in Construction a chance to essentially re-litigate some of the very same issues. Judge Newman in particular questioned the finality and certainty of such a practice. (12min-17min marks of oral argument). (Although, it was acknowledged that the USPTO was essentially the appellee in this instance, not the Requester)

Of course, the Court has considered the issue previously (In re Swanson (CAFC 2008)) holding:

[the relevant statutory] language and legislative history, as well as the differences between the two proceedings, lead [to the conclusion] that Congress did not intend a prior court judgment upholding the validity of a claim to prevent the [USPTO] from finding a substantial new question of validity regarding an issue that has never been considered by the [USPTO]. To hold otherwise would allow a civil litigant’s failure to overcome the statutory presumption of validity to thwart Congress’ purpose of allowing for a reexamination procedure to correct examiner errors, without which the presumption of validity would never have arisen. Swanson, 540 F.3d at 1382.

(emphasis added)

In Construction, while some of the art of the reexamination was previously used in the district court, the SNQ determination hinges upon issues previously considered by the USPTO, not the courts. (note, there is no statutory estoppel in ex parte patent reexamination)

During oral argument Construction indicated that they intend to pursue the “loser estoppel” theory to the District Court should the CAFC affirm, which seems likely.

Debt Ceiling Raised, Job Bills On Deck

With debt ceiling armageddon now averted in the 11th hour (depending upon your perspective), Congress has turned its attention to election season addressing the economy. As previously discussed, the patent reform legislation has long been touted as a “no cost economic stimulus” that will create jobs.

While there are differences with H.R. 1249 and S.23, most notably concerns over fee diversion, the Senate has indicated a willingness to accept the House bill.

Today, Senate Majority Leader Harry Reid (D-Nev.) has identified patent reform as the first jobs bill to be taken up in the Fall term. To ensure quick enactment Senator Reid has indicated he will file cloture today (to remove the “hold”) so that the Senate can take up the bill immediately when the Senate convenes in September.

Reid and bill sponsor Sen. Patrick Leahy (D-Vt.) said the bill, which speeds patent applications, is expected to create 200,000 jobs. Leahy said there is bipartisan agreement with the GOP to move the bill but he could not identify any other bills with a chance of passage.

BPAI Definition of Email Found Unreasonable by CAFC

Last February NTP appealed the invalidity findings of the USPTO to the Court of Appeals for the Federal Circuit (CAFC). At that time I predicted that the case would shift back to the USPTO on a disputed claim construction issue. Today, the CAFC, while affirming much of the UPSTO’s fact finding, did indeed remand the case for further consideration of a new definition of “electronic mail” or “electronic mail message.”

The eight related appeals included thousands of claims of the NTP portfolio, of note, the USPTO rejected all but one of the previously adjudicated (RIM Litiigation) NTP claims in patent reexamination. Specifically, all of the claims of NTP Inc’s U.S. Patents 6,317,592, 5,819,172, and 6,067,451 were rejected and affirmed (BPAI). Rejections were affirmed-in-part in 5,436,960 and 5,625,670, (the surviving ‘670 claims were added in reexamination, claim 15 of the ‘960 appears to be the only surviving claim successfully asserted against RIM).

Today, the CAFC affirmed the rejection of all 764 claims of the ‘592 patent. (NTP I, here).

A second decision (NTP II, here), which pertains to the remaining patents noted above as well as a few others, Vacated-in-part, Reversed-in-part, and Remanded previous determinations of the BPAI.

What does all of this mean for NTP?

Certainly, the remand on claim construction is a positive development for NTP. If nothing else it gives NTP another opportunity to argue for claims that stood previously rejected by the USPTO. Yet, many of the claims subject to the reexamination proceedings were newly added and it seems unlikely that the reexamination proceedings will conclude in time for these claims to have any enforceable term.  

As to the previously issued claims, while the CAFC did reverse some rejections, it is unclear whether or not the BPAI will enter new rejections based on obviousness, the new definition of “electronic mail,” or newly formulated theories altogether.

Aside from the potentially positive developments noted above, the CAFC decisions were negative in many other respects. For example, the CAFC affirmed the BPAI’s finding that the Telenor reference qualified as prior art, and also discounted the attempts of NTP to antedate certain art via 1.131 declaration evidence.

Uncharacteristically, the CAFC commented a few times that NTP’s arguments have seemingly shifted over time, and noted on the record that NTP has conceded several points that should not be revisited by the USPTO.

At the end of the day, the fight returns back to the USPTO for further appeal briefing and argument, and perhaps an eventual return to the CAFC. As such, the only certainty created by today’s decisions are the likely years of USPTO and CAFC processing still to come.