In re Inc.

• Decision Date: 01 August 2011
• Docket Number: No. 2010–1277.Reexamination Nos. 90/006,495 and 95/000,020.,2010–1277.Reexamination Nos. 90/006,495 and 95/000,020.
• Parties: In re NTP, INC.
• Court: U.S. Court of Appeals — Federal Circuit

654 F.3d 1268
99 U.S.P.Q.2d 1500

In re NTP, INC.

No. 2010–1277.Reexamination Nos. 90/006,495 and 95/000,020.

United States Court of Appeals, Federal Circuit.

Aug. 1, 2011.

[654 F.3d 1270]

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, GA.Nathan K. Kelley, Scott C. Weidenfeller and William Lamarca, Associate Solicitors, United States Patent and Trademark Office, of Alexandria, VA, argued for appellee. With them on the brief was Raymond T. Chen, Solicitor.Before GAJARSA, CLEVENGER, and MOORE, Circuit Judges.GAJARSA, Circuit Judge.

This is an appeal from the Board of Patent Appeals and Interferences (“Board”). NTP, Inc. (“NTP”) appeals the Board's decision affirming the U.S. Patent and Trademark Office's (“PTO”) rejection of all 764 claims of U.S. Patent No. 6,317,592 (“the '592 patent”) during reexamination. The Board held that all claims of the '592 patent were anticipated by U.S. Patent No. 6,219,694 issued to Lazaridis (“Lazaridis”), which qualified as prior art because the Board concluded that the '592 patent was not entitled to claim priority to U.S. Patent Application No. 09/161,462, the parent application of the '592 patent (“Parent Application”).

NTP appeals three specific issues: (1) whether the Board properly construed the

[654 F.3d 1271]

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.Background

This is one of eight related appeals concerning the reexamination proceedings of eight NTP patents. Seven of those appeals are disposed of in In re NTP, Inc., 654 F.3d 1279 (Fed.Cir.2011) (“ NTP Seven Appeal Op.”), which was decided contemporaneously herewith and provides a more detailed background of the appeals. In order to avoid repetition, this opinion reviews only the facts necessary to the resolution of this appeal.

The application that matured into the '592 patent was filed on December 6, 1999 and claims a priority date of May 20, 1991 through a series of continuation applications, as disclosed on the cover page of the '592 patent. The Parent Application to the '592 patent was filed on September 28, 1998.¹ Reduced to its simplest form, the invention described in the ' 592 patent is an electronic mail system that transmits an electronic mail message from an originating processor to a destination processor through a radio frequency (“RF”) data transmission network. Id. col.17 ll.25–32. Prior to reaching the destination processor, the electronic mail message is stored in a RF receiver, which sends the message to the destination processor when the two are connected. Id. col.17 ll.32–34, 41–43. In some embodiments of the invention, the electronic mail message is transmitted through the data transmission network using a gateway switch and/or an interface switch. Id. col.18 ll.1–8, col.19 ll.9–15. A gateway switch stores information that it receives from an originating processor before that information is transmitted to the destination processor. Id. col.19 ll.9–15. An interface switch connects the gateway switch to the RF transmission network to transmit the stored information. Id. col.19 ll.19–23.

For this appeal, the key feature of the claimed invention is the “destination processor.” Claim 1 is representative of the independent claims of the '592 patent with regard to this key feature:

1. In a communication system comprising a wireless system which communication system transmits electronic mail inputted to the communication system from an originating device, mobile processors which execute electronic mail programming to function as a destination of electronic mail, and a destination processor to which the electronic mail is transmitted from the originating device and after reception of the electronic mail by the destination processor, information contained in the electronic mail and an identification of a wireless device in the wireless system are transmitted by the wireless system to the wireless device and from the wireless device to one of the mobile processors connected thereto, the originating device comprising:

a programmed processor which executes electronic mail programming to originate the electronic mail, the electronic mail containing an address of the destination processor and the information contained in the electronic mail to be transmitted to the destination processor.

[654 F.3d 1272]

Id. col.28 ll.11–29 (emphases added). NTP disputes the meaning of “destination processor,” namely whether a destination processor performs any action after receiving an electronic mail message.

As originally issued, the '592 patent contained 665 claims, including twelve independent claims. On December 26, 2002, the PTO initiated reexamination proceedings,² during which NTP added dependent claims 666–764. On February 1, 2006, the examiner issued an Action Closing Prosecution, rejecting all 764 claims as anticipated, obvious, lacking written description, and/or lacking enablement. The examiner found that eight references anticipated or rendered obvious some or all of the claims. Seven of these references antedated the ' 592 patent's claimed priority date of May 20, 1991 under 35 U.S.C. §§ 102(b) or (e).³ Lazaridis, the eighth reference, has a filing date of May 29, 1998. It could not be a prior art reference if the ' 592 patent was entitled to claim the May 20, 1991 priority date. The examiner, however, concluded that the claims of the ' 592 patent were not entitled to the earlier priority date because the written description of the Parent Application did not support a destination processor that could retransmit the contents of an electronic mail message, as was claimed in the ' 592 patent. Therefore, Lazaridis was prior art under 35 U.S.C. § 102(e) and anticipated all 764 claims.

NTP subsequently appealed this decision to the Board, which affirmed the examiner's determination concerning the priority date of the '592 patent. ⁴ In re NTP, Inc., No. 2008–004606, at 130–35 (B.P.A.I. Nov. 10, 2009) (“ Board Op.”). First, the Board construed the term “destination processor” to mean the “particular end node device to which the intended user recipient of electronic mail has immediate and direct physical access when accessing and viewing electronic mail.” Id. at 28. The Board rejected NTP's argument that the “destination processor” could also be an intermediate node device, such as a gateway or interface switch. Id. 27–28. The Board explained that the written description consistently refers to destination processors, gateway switches, and interface switches separately. Id. at 27. Further, neither the gateway switches nor the interface switches allowed the user to review a message without further transmission. Id.

Next, the Board determined that the written description of the Parent Application “does not have [a] written description for wireless transmission of information

[654 F.3d 1273]

contained in an electronic mail after a destination processor has received the electronic mail.” Id. at 133. Claim 1 requires that after the destination processor receives the electronic mail message, it then transmits that electronic mail message to a wireless device and then to a mobile processor. '592 patent, col.28 ll.11–29. The written description of the Parent Application, however, only described a destination processor as having the ability to receive an electronic mail message—nothing more. Board Op. at 132–33. The Board rejected NTP's argument to define destination processor as including the gateway or interface switch based on its construction of destination processor. Id. Therefore, the '592 patent was not entitled to claim priority to the Parent Application and could not claim the priority date of May 20, 1991.

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. NTP timely filed an appeal with this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).

Discussion

This court reviews questions of law, such as claim construction and statutory interpretation, de novo. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.Cir.2004); In re Kathawala, 9 F.3d 942, 945 (Fed.Cir.1993). The Board's factual determinations, including what the examiner considered during prosecution, are reviewed for substantial evidence. See In re Swanson, 540 F.3d 1368, 1381 (Fed.Cir.2008); In re Gartside, 203 F.3d 1305, 1315 (Fed.Cir.2000) (“Because our review of the Board's decision is confined to the factual record compiled by the Board, we accordingly conclude that the substantial evidence standard is appropriate for our review of Board factfindings.”).

On appeal, NTP does not dispute that Lazaridis anticipates all the claims of the '592 patent if the '592 patent is not entitled to claim the priority date of its Parent Application, thus breaking the heredity chain of priority that dates to May 20, 1991. Instead, NTP premises its argument on the basis that the Board erred in construing destination processor. Under NTP's proposed construction, the written description of the Parent Application would support the claimed functions of the destination processor and thus entitle the '592 patent to claim an earlier priority date. NTP also argues that the Board erred in deciding that the '592 patent was not entitled to claim priority to its Parent Application during reexamination. NTP asserts that the PTO could...