(In re NTP)^8

Further to the NTP decisions of 1 Aug 2011, and the IPBiz post thereon, note the caption given by LEXIS:

IN RE NTP, INC. IN RE NTP, INC. IN RE NTP, INC. IN RE NTP, INC. IN RE NTP, INC. IN RE NTP, INC. IN RE NTP, INC. IN RE NTP, INC.

for the appealed cases: 2010-1243, 2010-1254, 2010-1263, 2010-1274, 2010-1275, 2010-1276, 2010-1278

[See 2011 U.S. App. LEXIS 15814 ]

Of the Rule 131 matter:

One issue common to several appeals is whether NTP successfully antedated a number of references under 37 C.F.R. ß 1.131. We review the Board's fact-findings for substantial evidence. In re Gartside, 203 F.3d 1305, 1312 (Fed. Cir. 2000). The critical date is October 29, 1990. In determining the date of reduction to practice, the Board focused on two aspects of the invention that it found to be critical to establishing an earlier invention date: "1) the requirement that e-mail be sent wirelessly and 2) the requirement that the electronic mail system transmit other originated information through a wireline without transmission using the RF information transmission network." 2010-1243 J.A. 193. NTP submitted inventor affidavits from Thomas Campana and Gary Thelen that allege a reduction to practice date prior to the critical date.

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. ß 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 bad news for NTP:

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 docu-ments do not evidence a reduction to practice prior to the critical date. Mr. Ponschke's testimony is particularly [*24] damaging to NTP's case. He testified that "we did not demonstrate e-mail. We demonstrated messaging." 2010-1274 J.A. 4280-81. This is consistent with the language used in all of the documents prior to October 29. They simply re-ferred to "messaging" or to a "pager." It was not until November 21, after the critical date, that any document stated that the system transmitted "Email." The November 21 letter details the demonstration at the Comdex show of the transmission of electronic mail. The problem for NTP is that November 10, the date of the Comdex demonstration, is after the critical date (October 29). Proving a November 10 demonstration does not establish reduction to practice prior to October 29. Thus, substantial evidence supports the Board's determination that these documents do not corroborate the testimony of Mr. Campana and Mr. Thelen. None of the documents describes the transmission of electronic mail prior to the critical date and the testimony of Mr. Ponschke provides sufficient evidence to support the Board's findings.

Klopfenstein was cited:

Whether a reference is publicly accessible is a question of fact that we review for substantial evidence. In re Klopfen-stein, 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).