In Re NTP, Inc.
654 F.3d 1279
| Fed. Cir. | 2011Background
- NTP, Inc. appeals Board rejections of seven related patents for RF-based electronic mail transmission systems.
- Patents share identical specifications; system uses gateway switch, RF network, and an interface switch to deliver messages to destination processors.
- Claim 1 broadly covers transmitting originated information from multiple originating processors to destination processors via RF and wired paths.
- The Board construed “electronic mail” and “electronic mail message” narrowly; the Board also addressed 1.131 swearing-behind and issues of Telenor as a printed publication.
- This court vacates-in-part, reverses-in-part, and remands for reconsideration consistent with the opinion.
- The decision also discusses authenticity and public accessibility of Telenor and various prior-art rejections.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Claim construction of electronic mail message | NTP contends the Board erred by limiting to destination address only. | PTO argues broader intent, but the Board’s construction is supported by the record. | Vacated-in-part; remand for correct construction. |
| Electronic mail system plurality requirement | NTP says system must include plurality of originators. | Board’s construction allowed broader interpretation. | Vacated-in-part; remand with correct construction emphasizing plurality. |
| Swearing behind under 37 C.F.R. § 1.131 | NTP asserts corroborated pre-critical-date reduction to practice. | PTO held corroboration insufficient; relies on post-date demonstrations. | Substantial evidence supports Board’s findings; affirmed without new corroboration; remand focus on construction. |
| Telenor authenticity and public accessibility | NTP challenges authenticity and accessibility as prior-art. | Board credited Library procedures and Sorsdahl’s testimony; Browne’s concerns insufficient. | Authenticity and public accessibility supported; no reversal on these points. |
Key Cases Cited
- NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005) (definition and scope of RF-based e-mail inventions; relevant to claim construction)
- In re Suitco Surface, 603 F.3d 1255 (Fed. Cir. 2010) (claim construction principles; tying to specification and ordinary skill)
- Grain Processing Corp. v. American-Maize Prods. Co., 840 F.2d 902 (Fed. Cir. 1988) (avoidance of hindsight in obviousness determinations)
- Hall, In re, 781 F.2d 897 (Fed. Cir. 1986) (library/publication accessibility principles; time of availability)