In re Inc.
| Decision Date | 17 November 2011 |
| Docket Number | 2010–1278.Reexamination Nos. 90/006,676,90/006,675,2010–1254,90/007,726,2010–1263,90/007,735.,2010–1276,90/006,533,90/006,677,90/006,491,90/006,492,90/006,678,90/007,731,90/006,493,Nos. 2010–1243,90/007,723,90/006,681,2010–1274,90/006,680,90/006,679,2010–1275,90/006,494,s. 2010–1243 |
| Citation | 99 U.S.P.Q.2d 1481,654 F.3d 1279 |
| Parties | In re NTP, INC. |
| Court | U.S. Court of Appeals — Federal Circuit |
OPINION TEXT STARTS HERE
Brian M. Buroker and Ozzie A. Farres, Hunton & Williams, LLP, of Washington, DC, argued for appellant. With them on the brief were Yisun Song; and Robert A. King, of Atlanta, Georgia.Nathan K. Kelley, Scott C. Weidenfeller and William Lamarca, Associate Solicitors, United States Patent and Trademark Office, of Alexandria, Virginia, argued for appellee. With them on the brief was Raymond T. Chen, Solicitor.Before GAJARSA, CLEVENGER, and MOORE, Circuit Judges.MOORE, Circuit Judge.
NTP, Inc. (NTP) appeals from decisions of the United States Patent and Trademark Office Board of Patent Appeals and Interferences (Board) affirming the rejections of claims in United States patent nos. 5,436,960 ('960 patent), 5,438,611 ('611 patent), 5,479,472 ('472 patent), 5,625,670 ('670 patent), 5,631,946 ('946 patent), 5,819,172 ('172 patent), and 6,067,451 ('451 patent). We address these seven appeals in a single opinion because there are common issues throughout. Related Appeal No.2010–1277 presents unique issues addressed in a separate opinion. For the reasons set forth below, we vacate-in-part, reverse-in-part, and remand.
The parties agree that the patents involved in this appeal share substantially identical specifications. 2010–1243 Appellant's Br. 2; 2010–1243 Dir. Br. vi. The patents describe a system for sending information (such as electronic mail) from an originating processor (i.e., a personal computer) to a destination processor (i.e., a mobile computer) using an intermediary, an RF receiver. '960 patent col.18 ll.32–39. Prior art systems such as the one shown in figure 1 of the '960 patent required a portable computer to connect to a public switched phone line in order to access electronic messages. Because it was difficult to locate a telephone jack, the mobile computer user was often unable to receive electronic mail. Id. col.3 ll.62–66. The inventors set out to solve this problem by introducing a Radio Frequency (RF) network 302. Figure 8 illustrates the invention:
Image 1 (3.95" X 2.77") Available for Offline Print The individual elements shown in this figure were all known. For example, it is undisputed that prior art electronic mail systems used gateway switches to store and forward electronic mail. Id. col.2 ll.22–30. The present invention introduced an interface switch to the system that communicates between the gateway switch and the RF network. Id. col.19 ll.11–13. This interface switch receives an electronic mail message from the gateway switch and forwards it, via the RF network, to an RF receiver. Id. col.20 ll.62–63. The RF receiver then transfers the electronic mail message to the destination processor (mobile computer) when the destination processor is activated. The system also allows for the transmission of electronic mail via the prior art wireline networks.
This is not the first time we have considered this family of patents. In NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1289 (Fed.Cir.2005), an infringement action, we described the function of the system:
[The invention's] particular innovation was to integrate existing electronic mail systems with RF wireless communications networks. In simplified terms, the ... invention operates in the following manner: A message originating in an electronic mail system may be transmitted not only by wireline but also via RF, in which case it is received by the user and stored on his or her mobile RF receiver. The user can ... at some later point, connect the RF receiver to a fixed destination processor, i.e., his or her personal computer [or mobile computer], and transfer the stored message. Intermediate transmission to the RF receiver is advantageous because it ‘eliminat[es] the requirement that the destination processor [be] turned on and carried with the user’ to receive messages. Instead, a user can access his or her email stored on the RF receiver and ‘review ... its contents without interaction with the destination receiver.’
(internal citations omitted). During this litigation, Research in Motion, Ltd. (RIM) filed the reexamination requests that led to this appeal.
Claim 1 of the '960 patent is illustrative of the claims at issue in this appeal and describes a “system for transmitting originated information from ... originating processors in an electronic mail system to at least one of a plurality of destination processors” comprising 1) a gateway switch in the electronic mail system to receive and store originated information (the text of an electronic mail message); 2) an RF network to receive originated information from the gateway and transmit it to an RF receiver; 3) an interface switch to facilitate communications between the gateway and the RF network, wherein the address of the interface switch is added during transmission in the electronic mail system; and 4) wherein the electronic mail system may also transmit originated information from an originating processor to a destination processor over a wireline—apart from the RF network. Other claims in the appeal are broader and remove the specific reference to the gateway switch. For example, claim 1 of the '670 patent describes an interface for communicating between an originating processor and an RF transmission network.
NTP appeals the Board's affirmance of a number of rejections detailed below. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1)(4)(A).
NTP raises several issues on appeal. First, it argues that the Board's claim constructions of “electronic mail message” and “electronic mail system” are incorrect. Second, it claims that the Board erred when it found that NTP could not antedate several references under 37 C.F.R. § 1.131. Third, it asserts that Telenor, eight volumes of a printed publication titled “Mobile Data Networks Description,” is not a prior art reference because it is not a printed publication under 35 U.S.C. § 102(b). Finally, it appeals several rejections unrelated to the construction of “electronic mail message” based on various prior art references. Each issue is discussed in turn.
The claim terms at issue in these appeals are “electronic mail” or “electronic mail message” and “electronic mail system.” 1 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.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.Cir.2004) (quotation omitted). Thus, while reviewing claim construction de novo, Singh v. Brake, 317 F.3d 1334, 1340 (Fed.Cir.2003), this court must determine whether the Board's construction of the term was reasonable, In re Morris, 127 F.3d 1048, 1055 (Fed.Cir.1997).
We turn first to the Board's construction of “electronic mail” or “electronic mail message.” The term “electronic mail” or “electronic mail message” appears in all eight patents-in-suit. The Board construed this term to mean a formatted text message having “a destination address identifying the persons, places, or objects to which the message is directed.” 2010–1263 J.A. 20. NTP asserts that this construction is incorrect and proposes that “electronic mail message” means a message that has “(1) the destination address; (2) an identification of the originating processor; (3) the subject of the message and (4) the message or message text with the clear result being that email elements (1) and (2) require a communication system to have both originating and destination processors.” 2010–1254 Appellant's Br. 29– 30. NTP's proposed construction has wavered between two positions throughout these appeals: requiring that all the listed fields be entered and requiring that only the destination address be entered with the capability for entry of the other three fields.2
The Board's construction only required the entry of a destination address. This construction, however, ignores the claim language and evidence of the understanding of a person of ordinary skill in the art. The claim language clearly requires that, in addition to a destination address, electronic mail messages have the capability for entry of message content, such as text or an attachment. Further, other intrinsic and extrinsic evidence shows that a person of ordinary skill in the art would recognize that an electronic mail message must also have the capability to enter an identification of an originating processor and a subject. While the Board must give the terms their broadest reasonable construction, the construction cannot be divorced from the specification and the record evidence. In re Suitco Surface, 603 F.3d 1255, 1259 (Fed.Cir.2010).
Based on the evidence, the broadest reasonable construction of “electronic mail message” is a message that has a destination address and the capability for entry of message content, an identification of an originating processor, and a subject. As with any claim construction analysis, we begin with the claim language. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir.2005) (en banc). The claims of the patents-in-suit require that an electronic mail message has a destination address. The parties do not dispute this point. For example, claim 1 of the '960 patent states that “the originated information is transmitted ... with an address of the at least one of the plurality of destination processors.” '960 patent col.49 ll.31–35; see also ...
To continue reading
Request your trial
-
Ayyadurai v. Floor64, Inc., Civil Action No. 17–10011–FDS
...to include an address of an originating processor, message content (such as text or an attachment), and a subject." In re NTP, Inc. , 654 F.3d 1279, 1289 (Fed. Cir. 2011). Accordingly, whether plaintiff's claim to have invented e-mail is "fake" depends upon the operative definition of "e-ma......
-
Teva Pharms. USA, Inc. v. Mylan Pharms. Inc.
...whether the patent challenger has carried its burden, courts are wary of arguments based on improper hindsight. See In re NTP, Inc., 654 F.3d 1279, 1298–99 (Fed.Cir.2011).ii. The Scope and Content of the Prior Art In this context, “prior art” includes art that is analogous to the claimed in......
-
Janssen Prods., L.P. v. Lupin Ltd.
...1317, 1320 (Fed.Cir.2004) ; see also KSR, 550 U.S. at 421, 127 S.Ct. 1727 ; Graham, 383 U.S. at 36, 86 S.Ct. 684 ; In re NTP, Inc., 654 F.3d 1279, 1299 (Fed.Cir.2011). Challenges to validity based on inadequate written description and enablement require resolution of facts. See Trading Tech......
-
Facebook, Inc. v. Windy City Innovations, LLC
...supports the Board's assessment and weighing of this evidence, and we decline to reweigh the evidence on appeal. See In re NTP, Inc. , 654 F.3d 1279, 1292 (Fed. Cir. 2011) ("This court does not reweigh evidence on appeal, but rather determines whether substantial evidence supports the Board......
-
Proving 'Prior Art' At The PTAB
...of Commerce, and thus falls squarely within the 'public offices or agencies' requirement of Rule 803(8)."). 11 In re NTP, Inc., 654 F.3d 1279, 1295 (Fed. Cir. 2011) (finding, in a proceeding not controlled by the rules of Evidence, a document was prior art because, as the Board noted, "the ......
-
Attacking Patents On Written Description & Enablement Grounds In Inter Partes Review
...a continuation application, even though no new material has been introduced into the application with the later filing date. In re NTP, 654 F.3d 1279 (Fed. Cir. 2011). The Board has specifically held that entitlement to priority is appropriately determined in the context of an IPR. See IPR2......
-
So, You Invented A Numerical Range
...majority reached. But given the deferential standard of appellate review, the dissent's remarks seem academic. See, e.g., In re NTP, Inc., 654 F3d 1279, 1292 (Fed. Cir. 2011) (noting the "Court does not reweigh evidence on appeal, but rather determines whether substantial evidence supports ......
-
So, You Invented A Numerical Range
...majority reached. But given the deferential standard of appellate review, the dissent's remarks seem academic. See, e.g., In re NTP, Inc., 654 F3d 1279, 1292 (Fed. Cir. 2011) (noting the "Court does not reweigh evidence on appeal, but rather determines whether substantial evidence supports ......
-
Chapter §22.02 Inter Partes Review
...reasonable interpretation, the Board's construction "cannot be divorced from the specification and the record evidence," In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011), and "must be consistent with the one that those skilled in the art would reach," In re Cortright, 165 F.3d 1353, 13......
-
Chapter §2.01 Introduction
...reasonable interpretation, the Board's construction "cannot be divorced from the specification and the record evidence," In re NTP, Inc., 654 F.3d 1279, 1288 (Fed.Cir.2011), and "must be consistent with the one that those skilled in the art would reach," In re Cortright, 165 F.3d 1353, 1358......