****** NTP '451 AND '592 PATENTS INVALIDATED BY USPTO *******

According to reports, the USPTO mailed the final office action regarding NTP's US Patent 6,067,451 (see RIM report here). However, no details are provided yet on the USPTO web site (see here).

What's also interesting (but not as widely reported) is that NTP's US patent 6,317,592 is about to be nixed as well. Unlike the '451 patent, while the final rejection hasn't been posted yet on the USPTO web site, the USPTO action closing prosecution was published on February 1, and contains many of the arguments that will likely be contained in the upcoming (formal) rejection. To view the document, click here (see "Action Closing Prosecution").

The action is a whopper - over 200 pages long (although, what would you expect in a patent having 764 claims?)

The rejection hit NTP hard - new claims that NTP submitted during reexamination were rejected under 35 U.S.C. 112, first paragraph for failing to comply with the written description requirement. 5 different rejections were applied to the claims under 35 U.S.C. 102 (anticipation) and 2 different lines of 35 U.S.C. 103 (obviousness) rejections were also used.

The Patent Office stressed in the action that NTP was improperly trying to apply the claim contruction used during litigation in the USPTO proceeding. While claims during litigation are interpreted in light of the specification and prosecution history, claim interpretation in the USPTO is conducted using a "broadest reasonable interpretation."

Also, despite assertions submitted by NTP of an earlier continuation filing (US Patent 6,067,051), the USPTO maintained that the earliest filing date for the '592 patent was December 6, 1999. And despite attempts by NTP to "swear-behind" certain prior art, the Office Action concluded that defects in the declaration, along with an insufficient showing of conception, rendered the declarations ineffective to prevail.

The final patent in this mix, 5,436,960, has been rejected twice, and is expected to also get a final rejection. To view the USPTO documents on the reexamination, click here.

It doesn't get any more interesting than this - RIM and NTP are due back in court two days from now . . .