Monday, August 01, 2011

Bad day for NTP at CAFC

Remember NTP in the NTP v. RIM saga? There were two cases decided at the CAFC on August 1, 2011. There is that concerning Reexamination No. 90/006,676 and the following.

The profile of the case involving Reexamination Nos. 90/006,495 and 95/000,020:

NTP appeals three specific issues: (1) whether the Board properly construed the term “destination processor”; (2) whether priority is properly considered during reexamination; and (3) if it is, whether determining priority is appropriate in this case. After considering all of the issues, for the reasons discussed below, we affirm the Board’s decision.

Of the priority matter:

Finally, because the ’592 patent’s priority date was its filing date of December 6, 1999, the Board found that Lazaridis—as 35 U.S.C. § 102(e) prior art—anticipated all claims of the ’592 patent. Id. at 135. The Board did not engage in a substantive analysis of Lazaridis because NTP did not “argue against the substantive merit of the anticipation rejection based on Lazaridis,” but only its availability as prior art. Id. at 122.

Of a Rule 131 declaration, see footnote 5:

NTP also argues that the ’592 patent was reduced to practice prior to October 29, 1990, thus antedating Lazaridis under 37 C.F.R. § 1.131. The companion opin- ion in this case disposes of this argument, finding that substantial evidence supported the Board’s determination that NTP presented insufficient evidence to satisfy 37 C.F.R. § 1.131. NTP Seven Appeal Op. at 14-21.

Of "broadest reasonable interpretation" [BRI]:

In reexamination, “claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” Am. Acad., 367 F.3d at 1364 (citation omitted). “Although the PTO gives claims the broadest reasonable interpretation consistent with the written description, . . . claim construction by the PTO is a question of law that we review de novo, . . . just as we review claim construction by a district court.” In re Baker Hughes, Inc., 215 F.3d 1297, 1301 (Fed. Cir. 2000) (internal citations omitted). In this case, the Board’s construc- tion of “destination processor” is legally correct and is reasonable in view of the written description and how the written description would be interpreted by one of ordi- nary skill in the art.

Of re-examination itself:

Reexamination proceedings, governed by 35 U.S.C. §§ 301 et seq., are intended to “permit any party to peti- tion the [PTO] to review the efficacy of a patent, following its issuance, on the basis of new information about pre- existing technology that may have escaped review at the time of the initial examination.” H.R. No. 66-1307, 96th Cong., 2d Sess. (1980), 3-4. The scope of reexamination proceedings is limited to “substantial new question[s] of patentability,” 35 U.S.C. § 303(a), which are questions that have not previously been considered by the PTO, Swanson, 540 F.3d at 1379. These new considerations must be based only on “prior art consisting of patents or printed publications.” 35 U.S.C. § 301; see id. § 302. Thus, other challenges to the patentability of original claims—such as qualification as patentable subject mat- ter under § 101 or satisfaction of the written description and enablement requirements of §112—may not be raised in reexamination proceedings.6 See id. § 301; 37 C.F.R. §§ 1.552(c), 1.906(c). Moreover, during reexamination, the patent claims no longer carry the statutory presumption of validity. In re Etter, 756 F.2d 852, 858 (Fed. Cir. 1985) (en banc).

Footnote 6 observes: Section 112 can be used to evaluate claims that were added during reexamination. 37 C.F.R. §§ 1.552(a), 1.906(a).

Of the priority argument in the case:

We first address NTP’s argument that § 301 prohibits the examiner from making a priority determination during reexamination. Reexamination proceedings are intended to have the same focus as original prosecution, Etter, 756 F.2d at 857, and are procedurally similar, see 35 U.S.C. §§ 305, 314. During reexamination, the exam- iner reviews the claims in view of various prior art pat- ents and printed publications. See id. § 301. If the examiner believes that a reference invalidates one or more claims of the patent, he or she issues an office action to the patentee explaining the reasons a reference is invalidating. See 37 C.F.R. § 1.104. In order to maintain those claims, the patentee must then traverse the exam- iner’s arguments. See id. §§ 1.111, 1.550. An argument can be made that the patent is entitled to a priority date that antedates the asserted reference. NTP argued that its antecedent date was able to overcome Lazaridis.
NTP, however, urges that the analysis stops here. In other words, 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 ‘reex- amination’ of the sufficiency of a disclosure. Rather, it is limited to reexamination of patentability based on prior art patents and publications.”

The CAFC noted

First, a district court decision may inform the issue but is not binding precedent on this court. See Brasseler, U.S.A. I, L.P. v. Stryker Sales Corp., 182 F.3d 888, 891 (Fed. Cir. 1999). Second, the district court precluded review of priority because that issue—along with enable-
ment—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).
Third, and most importantly, a patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority. Bausch & Lomb, Inc. v. Barnes- Hind/Hydrocurve, Inc., 796 F.2d 443, 459 (Fed. Cir. 1986) (explaining that “the art must have existed as of the date of invention, presumed to be the filing date of the applica- tion until an earlier date is proved”); see also In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995) (holding that a reference was properly considered prior art because the earlier filed application did not support the patent’s claims, thereby precluding reliance on its earlier priority date). Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120.

The CAFC firmly rejected NTP's argument:

Thus, 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 proceed- ing prohibiting the examiner from conducting a priority analysis. Otherwise, the examiner would be stripped of a critical legal tool needed in performing a proper reexami- nation. 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 to the presumption of full consideration:

n 2002, Congress amended § 303(a) to explain that “[t]he existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.” 2002 Amendment. In Swanson, we explained that this amendment meant that “Congress . . . has now rejected this presumption of full consideration. Section 303(a) as amended . . . requires a more context-specific approach that is based on an analy- sis of what the PTO actually did.” 540 F.3d at 1380. Thus, there is no presumption that the examiner consid- ered whether the written description of the Parent Appli- cation supports the claims of the ’592 patent simply because the MPEP requires it.

The CAFC distinguished 112 from 120:

Whether the examiner actually considered this issue can only be determined by reviewing the prosecution history. The history here fails to support NTP’s conten- tion that the examiner made such a considered judgment. Deciding whether a patent application satisfies §112 requires a distinct and separate analysis from deciding whether that application satisfies § 120. When an exainerm decides whether an application satisfies § 112, the examiner reviews only the application. Deciding whether that same application is entitled to an earlier priority date requires the examiner to determine whether pending claims are supported by the written description of the parent application. 35 U.S.C. § 120. While a continuation application is required to have an identical written de- scription to that of its parent, this can only be determined by examining the parent application. Here, it is undis- puted that the examiner made no such examination of the Parent Application. Indeed, “[i]n the absence of an inter- ference or rejection which would require the PTO to make a determination of priority, the PTO does not make such findings as a matter of course in prosecution.” Pow- erOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008) (footnote omitted).

The CAFC cited WMS Gaming:

Whether an examiner considered an issue must be context-specific, and here, there is no evidence that the examiner actually considered whether the claims of the ’592 patent satisfy the requirements of § 112. In cases where we have determined the examiner to have consid- ered an issue during the original prosecution, the issue was squarely before the examiner. For example, in Rec- reative Technologies, the examiner used the same refer- ence during the original prosecution and the reexamination proceedings to reject the patent’s claims for obviousness. In re Recreative Techs. Corp., 83 F.3d 1394, 1398 (Fed. Cir. 1996). This court found that the reexamination was improper because “[t]he question of patentability in view of the . . . reference was decided in the original examination, and thus it can not be a sub- stantial new question.” Id.; cf. WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (“The burden on the party asserting obviousness is more easily carried when the references on which the assertion is based were not directly considered by the examiner during prosecution.” (emphasis added)). In contrast, in Swanson, this court found that a reference relied on in the original prosecution could create a substantial new question of patentability where the reference was used for a different purpose during reexamination. 540 F.3d at 1380-81.

Bottom line:

We hold that the Board’s claim construction of destination processor was correct; and that priority can be considered and determined during reexamination pro- ceedings, and that here, such a determination was proper because the examiner did not consider priority during the original prosecution. Therefore, the ’592 patent was not entitled to claim the priority date of the Parent Applica- tion, and as a result, Lazaridis is prior art under § 102(e). As NTP does not dispute that the claims of the ’592 pat- ent are anticipated by Lazaridis under § 102, this court affirms the Board’s decision invalidating all claims of the ’592 patent as anticipated by Lazaridis.

NTP did do better in the other case; the conclusion reads:

The Board’s construction of the term “electronic mail [message]” was unreasonably broad. Because this con- struction is relevant to many of the bases for rejection, we remand for further proceedings in accordance with this opinion. However, we agree with the Board that NTP failed to “swear behind” certain references and that Telenor is a “printed publication” under § 102(b). Therefore, the Board need not reconsider those issues or any other issue expressly addressed in this opinion.


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