In re NTP, Inc.

Upon reexamination claims are to be given their broadest reasonable interpretation consistent with the specification in light of the specification as it would be interpreted by one of ordinary skill in the art; a printed publication qualifies as prior art if one of ordinary skill in the art would have located the source after a reasonable search; uncorroborated testimony cannot be relied upon to establish a prior reduction-to-practice or conception date.

Opinion (Moore): NTP, Inc. (“NTP”) appealed from the decision of the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences (“BPAI”) rejecting the claims of United State patent nos. 5,436,960, 5,438,611, 5,479,472, 5,625,670, 5,631,946, 5,819,172, and 6,067,451 (collectively, “the NTP patents”) during reexamination. The Court of Appeals found that the BPAI had improperly defined the claim construction of terms “electronic mail message” and “electronic mail system” within the patents. The Court of Appeals stated that in reexamination “claims are to be given their broadest reasonable interpretation consistent with the specification … in light of the specification as it would be interpreted by one of ordinary skill in the art.” The Court of Appeals found that the BPAI’s constructions for the terms did not account for the specifications of the NTP patents nor the record evidence and therefore defined each term with a broader construction. The Court of Appeals disagreed with NTP’s second challenge finding that NTP had failed to prove a priority date prior to the references being cited as anticipating the NTP patents. The Court of Appeals held that uncorroborated testimony, as provided by NTP, could not be relied on to establish a prior reduction-to-practice or conception date. Finally, the Court of Appeals held that Telenor (a challenged printed publication) qualifies as prior art since one of ordinary skill in the art would locate Telenor after a reasonable search. The U.S. Court of Appeals for the Federal Circuit VACATED-IN-PART, REVERSED-IN-PART, and REMANDED the case.