CAFC Reverses Rejections in Reexamination of 7 of 8 NTP Patents

Scott Daniels | August 2, 2011

NTP won an interim victory with yesterday’s CAFC’s decision to reverse the PTO’s anticipation rejection of seven email system patents in reexamination.  In a separate decision, the CAFC affirmed the PTO’s rejection of an eighth NTP patent, also in reexamination.  These are the patents that were the subject of NTP’s law suit against RIM several years ago, that resulted in a $612.5 million settlement for NTP. 

Essentially, the CAFC found that the PTO’s construction of the claim “electronic mail message” as requiring “the entry of a destination address” only was too broad in view of the claims, the specification and the prosecution history.  The CAFC concluded that a more narrow construction was appropriate: “an electronic mail message must include a destination address and must have the capacity to include an address of an originating processor, message content (such as a text or attachment), and a subject.”  The CAFC therefore remanded the seven patents to the PTO “for further proceedings in accordance with this opinion,” applying this more narrow claim construction.

This is obviously welcome news for NTP who has actions pending against Google, Microsoft, Apple and Yahoo for infringement of the seven patents. 

On the other hand, the CAFC’s decision also included a series of comments regarding the disclosure of the prior art references, the earliest priority date to which NTP is entitled, and the availability of a specific reference as prior art against NTP’s patents.  The CAFC also noted a series “NTP concessions” made during the appeal that are binding on NTP in the remand to the PTO.  Taken together, these comments from the CAFC seem to point the PTO toward determinations that the NTP patents are obvious over the prior art.  Of course, that is speculation, and several more years of briefing are needed to resolve the validity of NTP’s seven remaining patents.

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