RIM/NTP BATTLE HAS STAGE SET AT THE USPTO: As was reported earlier, the USPTO has issued a second non-final rejection for one of NTP's patents (US Patent 6,067,451) asserted in the battle-royale being conducted at the Eastern District of Virginia.

While most non-final rejections are somewhat anti-climactic, this one seems much more significant (you can view the USPTO documents here - simply click on "Reexam - Non-Final Action" dated 11/30/05).

For one, the non-final rejection should have been a final rejection, since the Examiner found NTP's arguments unpersuasive. However, the Examiner cited an additional reference (a document from the Norwegian Telecommunications Administration, submitted by NTP in a 1449), which the Examiner described as "strongly anticipatory." As such, the reference was added to the list and re-issued as a non-final rejection.

More importantly, NTP appears to be tangled in the litigation record before the USPTO. As part of its response to the first office action, NTP submitted a declaration setting forth conception and reduction to practice as part an effort to "swear-behind" one of the cited references. But once the Examiner reviewed the exhibits submitted during litigation, a different picture began to unfold.

After reviewing correspondence from NTP personnel, the Examiner came to the conclusion that the basic inventive concept was not reduced to practice prior to the filing date of the invalidating art. The NTP letters cited by the Examiner strongly suggested that NTP had not established the inventive concept that was being developed in collaboration with AT&T (transmitting email from an email system via RF network to an RF device). Worse still, the Examiner asserted that the deposition transcripts contradicted the patent owner's admissions contained in the declaration that was submitted to the USPTO.

Moreover, after reviewing these letters, the Examiner added an ominous footnote in the office action (page 9):

3. Leaving aside the issue of reduction to practice after the date of the Perkins Patent, the August 31 and November 21 letters raise a question at [sic] whether AT&T (rather than NPT[sic]) conceived and/or reduced to practice all or a substantial part the basic inventive concept of the invention: transmitting email from an (AT&T) email system via an RF network to an RF device (wireless laptop).

This is pretty serious stuff. After reading through the office action, I definitely got the impression that the Examiner was not pleased with what he received from NTP. They may have a tough road ahead of them for the remainder of this examination . . .