Wednesday, December 02, 2009

BPAI Starts Issuing Decisions on NTP/RIM Patent Reexaminations

It's hard to believe, but it has been almost 5 years since the NTP v. RIM case dominated the headlines and became a rallying point for much of the patent reform efforts we have seen to date.  In that case, NTP successfully asserted 5 patents against RIM, receiving judgment in the amount of $53.7M, as well as a permanent injunction.

The district court stayed the injunction, pending appeal to the Federal Circuit.  On appeal, the court upheld most of the lower court's findings, and remanded the case on claim construction issues (read the December 14, 2004 opinion here).  Just prior to the remanded proceedings, RIM settled the case and paid NTP $612.5 million "in full and final settlement of all claims against RIM, as well as for a perpetual, fully-paid up license going forward."

While the court proceedings raged on, a similarly heated battle took place at the USPTO, where NTP's patents were subjected to multiple reexaminations; one of the requests were ordered by the USPTO Commissioner himself.  The PTO's unusual interest in the reexamination, along with alleged improper contact between RIM and the PTO, sparked controversy in the patent community, where some argued that the PTO's actions gave the appearance that the proceedings were "fixed" against NTP (for more info, see here).  Even congressman Howard Berman, chairman of the House subcommittee on courts, the Internet and intellectual property, was concerned enough about an alleged meeting between the CEO of RIM and high level PTO officials that he formally questioned then-PTO Director Dudas in a list of oversight inquiries.

While this controversy continues to linger, the BPAI has released opinions on 3 of the 5 NTP patents that were rejected during reexamination.  In the opinions, some of the rejections were reversed, but most of the rejections, particularly the obviousness rejections (now subject to KSR), were upheld.  It appears that all of NTP's claims are rejected.  The opinions are an interesting read, but long - in total, the 3 opinions are almost 800 pages in length and address hundreds of different claims.

NTP US Patent No. 5,436,960 BPAI reexamination opinion (link) (252 pages)

NTP US Patent No. 5,819,172 BPAI reexamination opinion (link) (318 pages)

NTP US Patent No. 6,317,592 BPAI reexamination opinion (link)  (219 pages)

It is worthwhile to note that NTP is also in litigation with Sprint, T-Mobile, AT&T and Palm on these and related patents.  The BPAI has issued opinions on these patents as well - just as in the RIM case, the BPAI reversed some of the rejections, but upheld rejections based on obviousness.

NTP US Patent No. 5,438,611 BPAI reexamination opinion (link) ( 251 pages)

NTP US Patene No. 5,479,472 BPAI reexamination opinion (link) ( 214 pages)

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