Today the Federal Circuit issued two interesting opinions arising out of the reexamination of the NTP patents. Those patents had previously been the subject of some highly publicized litigation against the company that makes the Blackberry email device and service. NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005).
Both of today's cases are captioned In Re NTP, Inc. Both involved appeals by NTP of decisions by the Patent Office Board of Patent Appeals and Interferences to reject claims of NTP's patents. The first case involved seven different reexaminations. The Federal Circuit reversed the Board's rejections because of erroneous claim construction of "electronic mail message" and remanded the cases to the Board for further consideration. Of broader legal interest was the CAFC's rulings (1) that NTP did not successfully "swear behind" certain references under 37 C.F.R §1.131 (because of insufficient corroboration of an earlier invention date), and (2) that a reference that was cataloged in a Norwegian university was a prior art publication that could serve as an invalidating reference.
In the second case, the CAFC affirmed the Board's rejection of another patent. That opinion was interesting for its holdings that (1) priority can be considered during a reexamination; and (2) the question of whether an examiner actually considered an issue during previous prosecution must be determined by reviewing what actually happened ("Whether the examiner actually considered this issue can only be determined by reviewing the prosecution history. . . . Whether an examiner considered an issue must be context-specific. . . ."). The first issue means that reexaminations can consider whether a patent can correctly claim priority to an earlier application so as to avoid prior art.
The second issue has possible ramifications in areas other than reexaminations. One such area is whether an examiner actually considered a reference during prosecution -- if the examiner didn't, then during a subsequent lawsuit an accused infringer might be entitled to a jury instruction pointing that out, therefore making it easier to prove invalidity. In Microsoft Corp. v. i4i Limited Partnership, the Supreme Court recently suggested that such an instruction was proper. Today's second NTP opinion could be used to argue that if a reference was merely listed on a disclosure form and not actually considered by the examiner, then the jury instruction is appropriate.