In Re NTP, Inc.
654 F.3d 1268
| Fed. Cir. | 2011Background
- The '592 patent covers an electronic mail system transferring mail from an originating processor to a destination processor via an RF data network.
- A key feature is the 'destination processor,' with the Board restricting its meaning to the end node device with direct access for viewing mail.
- PTO reexamination in 2002 led to rejection of all 764 claims; Lazaridis (May 1998) is a prior art reference under §102(e).
- The Board concluded the '592 patent was not entitled to the May 20, 1991 priority date due to its written description and priority chain.
- As a result, Lazaridis anticipated all claims under §102, leading to rejection of the '592 patent claims during reexamination.
- NTP appealed arguing (i) the Board erred in the destination processor construction, (ii) priority could be examined in reexamination, and (iii) priority analysis was appropriate in this case.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Proper construction of destination processor | NTP contends destination processor is broader (includes intermediate nodes). | Board correctly construes as end-node with direct access based on written description. | Board's construction is correct. |
| Whether priority analysis may occur in reexamination | §301 precludes priority analysis in reexamination. | Priority analysis is permissible to determine §120 entitlement during reexamination. | Priority analysis may be considered in reexamination. |
| Whether priority determination was appropriate in this case | Examiner already considered priority in original prosecution; not reexaminable here. | Examiner did not consider priority during original prosecution; reexamination allowed exploration of §120. | In this case, priority was properly determined during reexamination; '592' not entitled to 1991 priority. |
Key Cases Cited
- In re American Academy of Sciences Tech Ctr, 367 F.3d 1359 (Fed. Cir. 2004) (claim construction reviewed de novo; broadest reasonable interpretation)
- In re Swanson, 540 F.3d 1368 (Fed. Cir. 2008) (substantial new question and prior art considerations in reexamination)
- Patlex Corp. v. Quigg, 680 F. Supp. 33 (D.D.C. 1988) (reexamination scope and priority considerations discussed)
- Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443 (Fed. Cir. 1986) (priority dates require proper disclosure support)
- In re Chu, 66 F.3d 292 (Fed. Cir. 1995) (earlier filing date requires adequate support for claims)
- Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997) (priority analysis and written description considerations in chain of applications)
- In re Recreative Technologies Corp., 83 F.3d 1394 (Fed. Cir. 1996) (reexamination proper where issue was squarely before examiner)