Priority Determination During Reexamination Is Not Prohibited by 35 U.S.C. § 301 and Proper Under § 303(a) Absent Evidence that Priority Was Examined

In re NTP, Inc., No. 2010-1277 (Fed. Cir. Aug. 1, 2011):


Holding:

The Board properly construed the term “destination processor” as not supporting the function to retransmit the contents of an electronic mail message in view of the written description, without abusing its discretion not to credit NTP’s expert declarations to the contrary. Slip op. at 11-12.

35 U.S.C. § 301 does not prohibit the examiner from undertaking a priority analysis under § 120 during a reexamination proceeding to ascertain whether a priority date is properly claimed in the original examination of the application. Slip op. at 15.

Priority determination during reexamination is not prohibited by § 303(a) as NTP failed to establish that the issues of priority and satisfaction of § 112 requirements were considered by the examiner during the original prosecution when neither rejection nor affirmative statements were issued by the examiner; and statements by an applicant does not constitute evidence of consideration or acceptance by the examiner. Slip op. at 18-19.

Relevant Facts:

Among other related seven appeals, the Patentee challenges the BPAI’s decision affirming the rejection of all 764 claims of its U.S. Patent No. 6,317,592 (“the ’592 patent”) during reexamination. Slip op. at 2. The BPAI held that all claims of the ’592 patent were anticipated by U.S. Patent No. 6,219,694 issued to Lazaridis (“Lazaridis”) on the ground that Lazaridis became qualified as a § 102(e) prior art reference upon the examiner’s conclusion that the ’592 patent cannot claim to an earlier priority date of its parent application, the written description of which was found not to support a “destination processor” performing claimed retransmission the contents of an electronic mail message. Id. at 5. NTP did not dispute the substantive merit of the anticipation based on Lazaridis but its availability as prior art. Id. at 7. Prior to this appeal, NTP sued RIM alleging infringement of the ‘592 patent among other NTP patents, after which the inter parte reexamination initiated by RIM was consolidated with the reexamination proceedings initiated by the PTO. NTP added dependent claims to the ‘592 patent during the reexamination. Id. at 4-5.

Comments:

Note that the Federal Circuit stated that the examiner is not prohibited from determining a new priority date in context of newly available references during reexaminations:

Thus, when a patentee argues that its claims are entitled to the priority date of an earlier filed application, the examiner must undertake a priority analysis to determine if the patentee meets the requirements of § 120. There is no statutory limitation during a reexamination proceeding prohibiting the examiner from conducting a priority analysis. Otherwise, the examiner would be stripped of a critical legal tool needed in performing a proper reexamination. Nothing in §§ 301 et seq. prohibits an examiner from determining whether or not a priority date was properly claimed during the original examination of the application.

Slip op. at 15.

Also note that the Federal Circuit emphasized the context specific approach for finding a substantial new question of patentability under § 303(a) during reexaminations:

In 2002, Congress amended § 303(a) to explain that “[t]he existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.” 2002 Amendment. In Swanson, we explained that this amendment meant that “Congress . . . has now rejected this presumption of full consideration. Section 303(a) as amended . . . requires a more context-specific approach that is based on an analysis of what the PTO actually did.” 540 F.3d at 1380. Thus, there is no presumption that the examiner considered whether the written description of the Parent Application supports the claims of the ’592 patent simply because the MPEP requires it.

Slip op. at 16.

Further note that the Federal Circuit pointed out when an issue can be found as considered by the examiner under the context specific approach:

In cases where we have determined the examiner to have considered an issue during the original prosecution, the issue was squarely before the examiner. For example, in Recreative Technologies, the examiner used the same reference during the original prosecution and the reexamination proceedings to reject the patent’s claims for obviousness. In re Recreative Techs. Corp., 83 F.3d 1394, 1398 (Fed. Cir. 1996). This court found that the reexamination was improper because “[t]he question of patentability in view of the . . . reference was decided in the original examination, and thus it can not be a substantial new question.” Id.; cf. WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (“The burden on the party asserting obviousness is more easily carried when the references on which the assertion is based were not directly considered by the examiner during prosecution.” (emphasis added)). In contrast, in Swanson, this court found that a reference relied on in the original prosecution could create a substantial new question of patentability where the reference was used for a different purpose during reexamination. 540 F.3d at 1380-81.

Slip op. at 18.