NTP Patents Revisited

In two opinions deciding eight reexamination appeals, the U.S. Court of Appeals for the Federal Circuit blessed the U.S. Patent and Trademark Office’s (USPTO’s) § 112 review of originally issued claims appurtenant to a review of a priority claim but vacated what it considered to be an overbroad claim construction even under the “broadest reasonable interpretation” standard. In re NTP, Inc., Case Nos. 10-1243, -1254, -1263, -1274, -1275, -1276, -1278 (Fed. Cir., Aug. 1, 2011) (Moore J.); In re NTP, Inc., Case No. 10-1277 (Fed. Cir. Aug. 1, 2011) (Gajarsa, J.).

In these cases, the Court revisited the patent family central to the infamous NTP v. Research in Motion litigation. During the litigation, Research in Motion (RIM) requested reexamination of eight patents. In one of the opinions, the Court affirmed the Board of Patent Appeals and Interferences’ (BPAI’s) decision regarding the propriety of undertaking a § 112 written descriptive review to analyze a patent owner’s priority claim and, in the other, remanded the case for further proceedings at the USPTO in view of what it concluded was an overbroad claim construction.

In the opinion by Judge Gajarsa, the Court sanctioned a review to determine the priority date of the patent, which shares a common specification with its parent, based on §112 written description. After affirming the BPAI’s construction of the claim term “destination processor,” the scope of which was found to not be supported by the parent, the Court turned to the issue of whether the priority date to which that claim was entitled could be reviewed. Under 37 C.F.R. §§ 1.552(a) and 1.906(a), reexamining originally issued claims for § 112 compliance is improper. Here, NTP unsuccessfully argued that this impropriety barred a priority review, because priority implicates a § 112 compliance review. NTP also argued that the common specification must support the claims simply because the USPTO issued the claims.

Judge Gajarsa found nothing in the patent statute or regulations prohibiting a priority review during reexaminations, noting that a priority review includes a review of § 112 with respect to a parent of the present application. To hold otherwise would hamstring the USPTO any time a patentee claimed an earlier priority date.

Addressing NTP’s other argument, the Court explained that verification of priority in the present application is not presumed simply because the Manual of Patent Examining Procedure (MPEP) requires it. Rather, for a presumption to apply, a factual inquiry into the issue must have been made in the parent application. NTP failed to show that the examiner considered priority or even reviewed the parent application during original prosecution.

In the opinion by Judge Moore, the Court vacated what it considered the BPAI’s overbroad constructions of the terms “electronic mail,” “electronic mail message” and “electronic mail system” as inconsistent with even the broadest responsible construction standard. As the Court explained, under Philips, any claim construction, even one invoking the broadest reasonable interpretation, must begin with the claim language and rely on the specification to glean the understanding of one skilled in the art. As the Court explained, “[w]hile the board must give the terms their broadest reasonable construction, that construction cannot be divorced from the specification and record evidence”. Using these tools, the Court narrowed the USPTO’s construction and remanded the case.

Practice Note: Even though originally issued claims are not subject to § 112 review in reexamination, a reexamination requester may obtain § 112 review by relying on prior art having a date that requires a patentee to rely on an earlier priority date.