USPTO PROVIDES RULING ON ESTOPPEL PROVISION IN NTP REEXAMINATION: In addition to the non-final rejection issued last week, the USPTO also denied a petition by NTP to sever and dismiss the inter-partes reexaminations currently being conducted at the USPTO. The petition filed by NTP submitted that, since RIM had exhausted its appeal rights as to the validity of the claims, they were now estopped from continuing the reexamination at the USPTO.

NTP based its petition on 35 U.S.C. 317(b), which provides:

(b) FINAL DECISION.- Once a final decision has been entered against a party in a civil action arising in whole or in part under section 1338 of title 28, that the party has not sustained its burden of proving the invalidity of any patent claim in suit or if a final decision in an inter partes reexamination proceeding instituted by a third-party requester is favorable to the patentability of any original or proposed amended or new claim of the patent, then neither that party nor its privies may thereafter request an inter partes reexamination of any such patent claim on the basis of issues which that party or its privies raised or could have raised in such civil action or inter partes reexamination proceeding, and an inter partes reexamination requested by that party or its privies on the basis of such issues may not thereafter be maintained by the Office, notwithstanding any other provision of this chapter. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings.

NTP argued that since issues of patent validity were decided at the district court and essentially upheld in the Federal Circuit (twice), the district court's decision should be deemed a "final decision" on claim validity.

The USPTO dismissed the petition on three grounds. First, the USPTO stated that the allowable time period for petitioning the Supreme Court for certiorari does not expire until January 6, 2006 (see page 12 of USPTO decision). As such, the appellate process had not been exhausted.

Second, the USPTO noted that the August 2, 2005 decision of the Federal Circuit vacated and remanded the case for further proceeding. While the original Federal Circuit decision upheld infringement of 6 claims (out of 659 claims), the USPTO stated the "[i]t is entirely possible for the District Court to alter its previous decision concerning the validity of the claims, which are also at issue in the present pending inter partes reexamination proceeding." More interestingly, the USPTO stated:

Even if the only issue on remand is directed to claim interpretation with respect to infringement, petitioner has not demonstrated that a different construction of the claim would not require revisiting of the validity of the reinterpreted claim. Thus, notwithstanding patent owner's arguments that 35 U.S.C. § 317(b) defines "final decision" in the context of decisions on claim validity, it is clear that the action taken on remand in the District Court may reasonably have a potential impact on claim validity. Even crediting patent owner's position that continuing litigation on issues other than claim validity does not necessarily mean that a given court decision on claim validity is not final, petitioner has nevertheless failed to demonstrated that in this case, RIM will be unable to obtain a different outcome (from the initial District Court finding) regarding the interpretation of one or more of the claims of the '592
patent, and that a different interpretation would not necessarily require that the court revisit the issue of the validity of the involved claim or claims.

(See page 12 of USPTO decision).

Finally, the USPTO held that NTP failed to shown that all of the prior art relied upon in the reexamination proceeding "was raised" or "could have" been raised in the District Court litigation. NTP did not show that RIM had a legal right, as to a given patent or printed publication relied on in the reexamination proceeding, to introduce that patent or publication into the litigation after it became "available" to RIM.

According to the examiner, NTP neither alleged nor established that, at the inception of the litigation, RIM knew of the prior art that is of record in the reexamination proceeding that was not of record in the litigation. Alternatively, NTP had not established that RIM learned of this "additional" prior art subsequent to the inception of the litigation and could have raised that art during the litigation but failed to do so. In particular, NTP had not demonstrated that the prior art applied in the outstanding Office action dated September 28, 2005 that was not considered during the litigation was ever introduced into the litigation, or could have been raised therein by RIM.