Scott Daniels | May 4, 2011
The claims of RIM’s U.S. Patent 6,219,694 are for forwarding a message generated by a mobile client. One of the independent claims recites configuring a “received message, prior to forwarding to the message recipient, such that the received message appears to the message recipient as if the received message originated at the sender’s email address associated with the host system.” In other words, you can send an email from the pub, but the recipient believes that you are in the office. Little surprise that such a valuable invention has twice survived reexamination.
Motorola attempted to deal with RIM’s ‘694 patent by copying claims from that patent in a pending Motorola application, thereby provoking an interference between the patent and the application. On Monday, however, the PTO Board of Appeals determined (here) that the Motorola specification did not contain written description support under 35 U.S.C. § 112, ¶ 1 for those copied claims, and therefore Motorola did not have standing to continue in the interference.
The Board began its analysis by construing Motorola’s copied claims in light of RIM’s ‘694 patent specification, as required by the CAFC’s 2009 decision in Agilent v. Affymetrix. After construing several specific claim terms, the Board found that Motorola’s “specification does not appear concerned with or interested in making it not ascertainable by the ultimate message recipient whether the message originated at a mobile client.” Rather, the Motorola specification is directed to “monitoring and controlling the amount of wireless communications between a remote unit and a host server.” Since Motorola’s specification could not support claims for the same invention as the ‘694 claims, the Board entered judgment on priority against Motorola.
One of the three Administrative Patent Judges, Richard Torczon, joined in the determination in favor of RIM, but took issue with the majority’s reliance on Agilent. APJ Torzcon argued that when an applicant copies claims to provoke an interference, those copied claims should be construed in light of the applicant’s specification, not the specification of the opposing party. APJ Torzcon explained that the CAFC precedent, on which Agilent is based, relates to interpretation of an interference count, not copied claims. This legal distinction has been important for a number of interferences, but was not resolved here because the copied claims lacked written description support, whether they were construed according to the RIM’s specification or Motorola’s specification.
 We also counted 41 applications related to the ‘694 patent.