Ex Parte NTP, Inc. et al

Board of Patent Appeals and Interferences

Nov 27, 2009

90006676 (B.P.A.I. Nov. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte NTP, Inc.
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Appeal 2008-004587
Reexamination Control 90/006,676
Patent No. 5,438,6111
Technology Center 3900
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ENTERED: November 27, 2009
________________

Before JAMES T. MOORE, Vice Chief Administrative Patent Judge,
JAMESON LEE and SALLY C. MEDLEY, Administrative Patent Judges.

Per Curiam

DECISION ON APPEAL
NTP, Inc. (NTP), the assignee of Patent 5,438,611 under
reexamination, appeals under 35 U.S.C. §§ 134(b) and 306 from a final
rejection of claims 1-80 and 221-274. We have jurisdiction under 35 U.S.C.
§§ 6(b) and 134(b).
We affirm.
STATEMENT OF THE CASE
The involved Patent 5,438,611 (“the NTP ’611 patent”) issued on
August 1, 1995, with patent claims 1-80, and was the subject of ex parte

1 Based on Application 08/247,466, filed on May 23, 1994, said to be a
continuation of Application 07/702,319 filed May 20, 1991, now abandoned.
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reexamination proceeding 90/006,676 filed June 24, 2003. Final rejection
by the Examiner was entered on August 22, 2006. Claims 81-274 were
added during reexamination, and claims 81-220 have been cancelled, leaving
claims 1-80 and 221-274 finally rejected.
This appeal followed.
The NTP ’611 patent is the subject of, inter alia, a patent infringement
suit filed by NTP against Sprint Nextel in the U.S. District Court for the
Eastern District of Virginia, styled NTP, Inc. v. Sprint Nextel, Corp., No.
3:07cv551, 2003 WL 3254796 (E.D. Va. Nov. 2, 2007). Other litigation has
been filed against T-Mobile (3:07cv548) and AT&T Mobility (3:07cv550) in
the same District Court. At least some of that litigation remains stayed
pending the outcome of these reexamination proceedings. See, e.g., the
November 2, 2007 order granting motion to stay in 3:07cv551.
Oral argument was held October 28, 2008. The panel authorized NTP
to file additional evidence on antedation in an Order dated November 6,
2008. That evidence was filed, and found lacking. A subsequent Order was
issued permitting NTP additional briefing on antedation on February 18,
2009. On April 22, 2009, a Supplemental Brief on antedation was received
from NTP.
This decision reviews the final rejection of the Examiner of all
pending rejected claims based on issues raised in the briefing.
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THE INVENTION
The inventors’ innovation as claimed in claim 1 includes:

1. A system for transmitting originated information from one of a
plurality of originating processors in an electronic mail system to at least one
of a plurality of destination processors in an electronic mail system
comprising:
at least one gateway switch, the at least one gateway switch storing
originated information received from one of the plurality of originating
processors prior to transmission of the originated information to the at least
one of the plurality of the destination processors;
a RF information transmission network for transmitting the originated
information to at least one RF receiver which transfers the originated
information to the at least one of the plurality of destination processors;
at least one interface switch, the at least one interface switch being
coupled to at least one gateway switch and to the RF information
transmission network and transmitting the originated information received
from the at least one gateway switch to the RF information transmission
network; and
at least one additional processor with each additional processor being
coupled to at least one interface switch, one of the at least one additional
processor originating other originated information from outside any
electronic mail system for transmission to the at least one of the plurality of
destination processors by the RF information transmission network and an
address of the at least one of the plurality of destination processors to receive
the other originated information transmitted by the RF information
transmission network or an identification number of the at least one RF
receiver receiving the other originated information for transmission to the at
least one of the plurality of the destination processors and transferring the
other originated information to the at least one of the plurality of the
destination processors; and wherein
the interface switch receiving the other originated information
originating from the one additional processor and the address or
identification number adds RF network information used by the RF
information transmission network during transmission of the other
originated information to the at least one RF receiver receiving the other
originated information to the other originated information: and
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each electronic mail system in the system transmits other information
from one of its plurality of originating processors through a wireline to at
least one of its plurality of destination processors without transmission using
the RF information transmission network.

Figure 8 from the ‘611 patent is a diagrammatic
representation of the field of the subject matter at issue. It does not
illustrate the limitations of the claims. A key limitation of the instant
claims involves the “additional processor” which “originates” other
“originated information.”

THE REJECTIONS AND THE ART

Claims 1-80 and 221-274, in various combinations, were finally
rejected in twelve different grounds of rejection, relating both to prior art
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and other statutory grounds of rejection. A double-patenting rejection has
been withdrawn (Final Rejection at 51.)
The prior art references relied on by the Examiner are as follows:2
1. Telenor ’89 -- Stig Kaspersen et al., Norwegian
Telecommunication Administration, Mobile Data Network
Description (1989) (Volumes 1-4, 6-8 (there is no public
Volume 5)).

2. May – U.S. Patent 5,043,721, issued August 27, 1991,
based on application filed December 18, 1989.

3. Verjinski -- Verjinski, Richard D., “PHASE, A Portable
Host Access System Environment,” 3 IEEE Military
Communications Conference 1989, 0806-0809 (October 18,
1989).

4. Garbee -- Bdale Garbee, The KA9Q Internet Software
Package (1989).

5. Perkins -- U.S. Patent 5,159,592, issued October 27,
1992, based on application filed October 29, 1990.

6. Hortensius -- U.S. Patent 5,917,629, issued June 29,
1999, based on application filed October 29, 1990.

The rejections under review are as follow:

I. Claims 221-226, 231-238, 240-243, 245-267, and 269-274 were
finally rejected under 35 U.S.C. § 112, first paragraph, as without written
description in the specification.

2 The Examiner also relied on art admitted to be prior art in the specification
(e.g. Figure 6, labeled “prior art”).

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II. Claims 221-226, 231-238, 240-243, 245-267, and 269-274 were
finally rejected under 35 U.S.C. § 112, first paragraph, as lacking an
enabling disclosure.
III. Claims 221-226, 231-238, 240-243, 245-267, and 269-274 were
rejected under 35 U.S.C. § 305 as violating the prohibition against
enlargement of the scope of a patent claim in a reexamination proceeding.
IV. Claims 244 and 268 were rejected under 35 U.S.C. § 112, second
paragraph as being indefinite.
V. Claims 1-6, 8, 10, 12, 14, 16-27, 30-31, 34-35, 38-39, 42-43, 46-
51, 53-63, 65, 67-68, 77-80, and 221-274 were rejected under 35 U.S.C. §
102(b) as being anticipated by Telenor ’89.
VI. Claims 69-76 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Telenor and May.
VII. Claims 1-5, 16-25, 46-50, 53-62, 67-68, and 77-80 were rejected
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Verjinski and Garbee.
VIII. Claims 6-15, 26-45, 51-52, and 63-66 were rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Verjinski,
Garbee, and prior art described in the ‘611 patent.
IX. Claims 69-76 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over Verjinski, Garbee, and May.
X. Claims 1-5, 16-25, 46-50, 53-62, 67-68, and 79 were rejected
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Perkins, Hortensius, and Garbee.
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XI. Claims 69-76 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Perkins, Hortensius, Garbee and May.
XII. Claim 80 was rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Perkins, Hortensius, and Garbee, and
admitted prior art in the NTP ‘611 patent.

DISCUSSION
The discussion below is organized into Sections A-L.
Section A discusses claim interpretation.
Section B discusses rejections based in whole or in part on Telenor
’89.
Section C discusses rejections based in whole or in part on Verjinski.
Section D discusses rejections based in whole or in part on Perkins or
Hortensius.
Section E discusses secondary considerations and evidence of
nonobviousness.
Section F addresses NTP’s argument that the copy of Telenor ’89
relied on by the Examiner contains content which have been altered and
manipulated and thus is not authentic, and also NTP’s argument that Telenor
’89 is not a printed publication.
Section G addresses NTP’s efforts to antedate Perkins and Hortensius
as prior art.
Section H addresses the rejection of claims 221-226, 231-238, 240-
243, 245-267, and 269-274 under 35 U.S.C. § 112, first paragraph, for lack
of written description in the specification.
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Section I addresses the rejection of claims 221-226, 231-238, 240-
243, 245-267, and 269-274 under 35 U.S.C. § 112, first paragraph, for lack
of enabling disclosure.
Section J discusses the rejection of claims 221-226, 231-238, 240-243,
245-267, and 269-274 under 35 U.S.C. § 305.
Section K discusses the rejection of Claims 244 and 268 under 35
U.S.C. §112, second paragraph.
Section L Summarizes the Decision.
A. Claim Interpretation
NTP argues that we must adopt the claim interpretation applied by the
U.S. District Court for the Eastern District of Virginia in the infringement
litigation between NTP and RIM involving other NTP patents. According to
NTP, the final court interpretation of the meaning of claim terms in its
infringement litigation applies in this reexamination proceeding. NTP urges
that it is “estopped from asserting a broader claim construction than that
determined by the full and final judicial proceedings.” (Brief 11).
The argument is without merit.
The claim interpretation affirmed by the Federal Circuit in NTP’s
patent infringement suit does not control in the proceeding before us and
neither does the claim interpretation applied by the Eastern District of
Virginia in that litigation but not reached by the Federal Circuit.
We decline to adopt NTP’s approach to USPTO’s examination
procedures. Instead, we construe NTP’s claim terms according to the rules
of claim interpretation applicable to reexamination proceedings before the
USPTO.
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NTP maintains (Brief 10-19) that the Examiner erred in construing the
claims on appeal. The Examiner interpreted the claims by applying the rule
generally applicable in reexamination proceedings, i.e., claim terms are
given their broadest reasonable construction consistent with the
specification. The reexamination claim construction rule for unexpired
patents was first announced in In re Yamamoto, 740 F.2d 1569, 1571 (Fed.
Cir. 1984) (during reexamination, claims of unexpired patents given
broadest reasonable construction consistent with specification).
The USPTO and the Federal Circuit have consistently followed the
rule since Yamamoto. See, e.g., (1) In re Etter, 756 F.2d 852, 856-59 (Fed.
Cir. 1985) (en banc) ((a) presumption of validity does not apply in
reexamination; (b) claims of unexpired patent in reexamination given
broadest reasonable construction; (c) reexamination is an ex parte
proceeding); (2) In re Hiniker Co., 150 F.3d 1362, 1368 (Fed. Cir. 1998)
(claims in a reexamination proceeding are to be given their broadest
reasonable interpretation); (3) In re Am. Acad. of Science Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004) (claims are given broadest reasonable
construction in reexamination); (4) In re ICON Health and Fitness, Inc., 496
F.3d 1374, 1379 (Fed. Cir. 2007) (during reexamination, PTO gives claims
broadest reasonable interpretation; as patent owner has an opportunity to
amend the patent claims); and (5) In re Translogic Technology, Inc., 504
F.3d 1249, 1256 (Fed. Cir. 2007) (during reexamination, claims are given
their broadest reasonable interpretation consistent with the specification).
Cf. Ex parte Papst-Motoren, 1 USPQ2d 1655 (BPAI 1986)(reexamination
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claim construction applied where the patent undergoing reexamination has
expired.).
According to NTP, the Yamamoto reexamination claim construction
practice should not apply in this case. NTP tells the Board that limitations in
the claims on appeal, or at least some of the limitation in the claims on
appeal, were construed in the patent infringement civil action between NTP
and RIM in NTP, Inc. v. Research in Motion, Ltd., Civil Action
3:01CV767, 2003 WL 23100881 (E.D. Va. Aug. 5, 2003). Further
according to NTP, it is estopped from seeking a claim construction broader
than that made by the Eastern District of Virginia (“E.D. Va.”). Stated in
other terms, NTP says it is foreclosed from asserting a broader claim
construction in the future.
Essentially NTP maintains that since the E.D. Va. and the Federal
Circuit on appeal, have construed the claims, "the claim constructions
handed down by the Courts and adopted by the Patent Owner already
conclusively defines the meanings of the claims.” (Brief 17). NTP therefore
reasons that the rule of In re American Academy has no application in this
case, because in American Academy there had not been a prior district court
interpretation of the claims.
No court has construed the claim terms in this patent; therefore,
NTP’s arguments about it being ‘bound’ are misplaced. NTP has not
represented that the disclosures of the patents are in fact identical.
Additionally, in our view, NTP misapprehends the differences
between (1) how claims are construed in litigation and (2) the underlying
purpose of reexamination. The differences have been articulated by the
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Federal Circuit in In re Swanson, 540 F.3d 1368, 1377-78 (Fed. Cir. 2008)
((1) USPTO examination procedures have different standards, parties,
purposes, and outcomes compared to civil litigation; (2) USPTO standard for
rejecting is "preponderance of the evidence" which is substantially lower
than in a civil case where standard is clear and convincing; and (3) claim
construction in USPTO differs from the claim construction in civil
litigation.).
NTP asserts that the claim construction of the E.D. Va. is binding on
the USPTO in these reexaminations. NTP's assertion is incorrect. In
support of its assertion, NTP cites a non-precedential Federal Circuit opinion
in Marlow Industries, Inc. v. Igloo Products Corp., 65 Fed. Appx. 313, 318
(Fed. Cir. 2003) ("[i]n addition, the district court's two previous orders
construing the '193 patent and concluding that picnic boxes that only cooled
did not infringe the patent were binding on the examiner under the doctrine
of issue preclusion."). (Brief 12). Apart from the fact that Marlow is non-
precedential, the Government was not a party in Marlow and therefore
cannot be bound by statements in Marlow which may or may not be dicta.
NTP's preclusion issue is foreclosed by In re Trans Texas Holdings Corp.,
498 F.3d 1290, 1297 (Fed. Cir. 2007) (claim construction of patent
undergoing reexamination by district court in action not involving the PTO
is not binding on the PTO—there is no collateral estoppel). As the Federal
Circuit succinctly put it: "This argument simply makes no sense." 498 F.3d
at 1297. See also Standard Havens Products, Inc. v. Gencor Industries, Inc.,
953 F.2d 1360, 1366 n.2 (Fed. Cir. 1991).
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There are additional policy reasons for adhering to the Yamamoto rule
in this appeal.
First, this ex-parte reexamination proceeding was requested by a third-
party. In making the request, the third-party had an expectation (provided
the USPTO found a substantial new question of patentability) that the
USPTO would apply the "rules" to the reexamination. Had the third-party
understood that the USPTO would change those "rules" in the middle of the
reexamination proceeding, the third-party may not have filed the
reexamination request in the first place. Third-parties and the public have an
expectation that the USPTO will adhere to the "rules" and "practices" in
performing its congressionally assigned duties. NTP's proposed claim
construction would undermine public confidence in the reexamination
process.
Second, there is no meaningful adverse consequence in amending the
claims in these appeals. If, as NTP asserts, the claims on appeal are to be
construed in accordance with the interpretation of the E.D. Va., then what is
the harm in amending the claims to conform to that interpretation.
Assuming NTP is correct that it is precluded from arguing an
interpretation broader than the interpretation of the E.D. Va., why should
other potential defendants have to re-litigate claim interpretation (as they
have a right to do) and why should another district court (or even the same
district court) have to spend resources re-considering claim interpretation.
In an ideal world, claims should say precisely what they mean and the need
for interpretation (both in the USPTO and the courts) should be minimized.
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Under the circumstances presented to us, NTP could have avoided the
entire claim construction issue in the first place if it simply had amended the
claims to explicitly incorporate therein the claim interpretation of the E.D.
Va. Had NTP done so, the explicit definition of the invention defined by the
claims on appeal would be exactly the same as the implicit definition
assigned to the claims by the E.D. Va. The place to take care of any possible
ambiguity in a claim is during proceedings in the USPTO—in this case
during reexamination. Cf. In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989)
(an essential purpose of patent examination is to fashion claims that are
precise, clear, correct, and unambiguous; only in this way can uncertainties
of claim scope be removed, as much as possible, during the administrative
process).
We have not overlooked the fact that NTP is of the opinion that the
claim interpretation of the E.D. Va. is the broadest reasonable interpretation.
NTP reasons, therefore, that there was no need to amend claims during the
reexamination proceedings before the USPTO. In taking the approach it did,
NTP made a litigation choice to run a risk that the USPTO would not
interpret claim language broader than the E.D. Va. To the extent that the
USPTO interprets claim language broader than the E.D. Va., NTP now lives
with its litigation choice.
Even if the invention disclosed in an applicant’s written description is
outstanding in its field, it is still the case that “the name of the game is the
claim.” In re Hiniker, 150 F.3d at 1369 (citing Giles Sutherland Rich,
Extent of Protection and Interpretation of Claims -- American Perspectives,
21 Int’l Rev. Indus. Prop. & Copyright L. 497, 499 (1990)). It is the claims
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on which we focus, not the disclosed embodiments and examples, in
determining whether the claimed invention is novel and patentably distinct
from the prior art.
In a reexamination proceeding such as this, as it is in all patent
examinations before the U.S. Patent and Trademark Office, claim terms are
read and interpreted according to their broadest reasonable construction
consistent with the specification. E.g., In re American Academy, 367 F.3d at
1363; In re Yamamoto, 740 F.2d at 1571.
At the very least, the rule of broadest reasonable interpretation
precludes importation into the claims of an “extraneous limitation” from the
specification. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). A
limitation is extraneous if there is no need for its inclusion in the claim for
the claim to have a reasonable meaning. See, id.; E.I. du Pont de Nemours
& Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). As
the Court of Appeals for the Federal Circuit has clearly stated in In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004):
[T]his court counsels the PTO to avoid the temptation to limit
broad claim terms solely on the basis of specification passages.
In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Absent claim
language carrying a narrow meaning, the PTO should only limit
the claim based on the specification or prosecution history
when those sources expressly disclaim the broader definition.
See, e.g., Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898,
906-09 (Fed Cir. 2004)(explaining requirement for an express
disclaimer in either the specification or prosecution history).

Although claims are interpreted in light of the specification,
“particular embodiments and examples appearing in the specification will
not generally be read into the claims.” Constant v. Advanced Micro-
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Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)(“A reading of the
specification provides no evidence to indicate that these limitations must be
imported into the claims to give meaning to disputed terms.”). Where the
specification sets forth no definite requirement of a specific limitation for a
claim term, that limitation should not be read from the specification into the
claims. Specialty Composites v. Cabot Corp., 845 F.2d 981, 987 (Fed. Cir.
1988). In Lemelson v. United States, 752 F.2d 1538, 1552 (Fed. Cir. 1985),
the Court of Appeals for the Federal Circuit stated:
In Fromson v. Advance Offset Plate, Inc., this court cautioned
against limiting the claimed invention to preferred
embodiments or specific examples in the specification. 720
F.2d at 1568, 219 USPQ at 1139 (citing Smith v. Snow, 294
U.S. 1, 11, 55 S.Ct. 279, 283, 79 L.Ed. 721 (1935)). Even if the
specification only discloses apparatus directed to executing
automatic prepositioning of the workpiece or the measurement
device or both, this does not dictate reading such a limitation
into the pre-positioning step of the claim.

Thus, even if the specification discloses only one embodiment or
implementation for a claim element, it is not reason enough to read all the
requirements of that embodiment or implementation into the claims. As the
Supreme Court stated in McCarty v. Lehigh Valley R. Co., 160 U.S. 110, 116
(1895):
[I]f we once begin to include elements not mentioned in the
claim in order to limit such claim . . . we should never know
where to stop.

We are cognizant that a patent applicant through the specification can
be its own lexicographer in redefining the meaning of a known term in the
art to something else. But the special definition must be set out in the
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specification, In re Paulsen, 30 F.3d at 1480; Intellicall, Inc. v.
Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992). Also, the
defining must be done with “reasonable clarity, deliberateness, and
precision.” In re Paulsen, 30 F.3d at 1480. Thus, unless the specification is
clear in setting forth a limiting definition or disclaiming a broader coverage
for a claim term, examples and preferred embodiments disclosed in the
specification are regarded as just that, i.e., examples and preferred
embodiments, and not as restrictive limitations.
Based on the description in the specification of the NTP ’611 patent,
the inventors do not purport to be their own lexicographer in setting forth a
new and more restrictive definition for any word or term already known in
the art. When asked by the panel about this issue during oral hearing, NTP’s
counsel failed to identify any special or restrictive definition which has been
set forth in the specification for any claim term. Pertinent portions of the
exchange between the panel and counsel are reproduced below (Hearing
Transcript 34:15 to 37:6):
JUDGE LEE: Along that line, has any one of your
inventors acted as his own lexicographer and coined a term with
a special definition that's not otherwise known to people in the
art in any one of your eight patents?

MR. BUROKER: Well, I believe that that's what
the district court found in a number of instances.

The term "gateway switch" can mean a lot of
things in different contexts but in the context of this particular
patent, it means the definition we have given, which is that it is
one of the processors in an electronic -- a processor in an
electronic mail system which connects other processors in that
system, et cetera.
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But that's an example of a situation which we think
they weren't using the term generically, they were using it
specifically to talk about --

JUDGE LEE: Well, it doesn't depend on any
district court. It is did your inventors try to coin the new term
and define it in your spec.

You know, there are case law that says inventors
can come up with their own terms whenever they like as long as
they put their own definition in the spec. I'm just trying to find
out do we have that situation here.

MR. BUROKER: Well, I think "gateway switch"
is one of those situations in which that's what they tried to do.
Does it say gateway switch means X and give a definition?
They didn't go that far but we believe that that's what the
meaning of that term is in the particular specification in the way
in which it is used in the claims.

JUDGE LEE: So I'm not sure how to take that. It
should be an easy yes or no. Yes, our inventors coined a new
term with a new definition or, no, they used terms that were
known in the art. Is that too unreasonable to ask for a yes or no
answer?

MR. BUROKER: Well, in the context of this
invention, gateway switch couldn't have been known in the art.
That's the point. The gateway switch is acting in a new
capacity. There were -- there were gateway switches because
that term is in the background section but here the gateway
switch is described as having additional functionality. So I
guess it is a yes and a no. That's the hard --

JUDGE LEE: Well, that's my problem, too. Since
-- but according to case law, in order to be your own
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lexicographer, you have to clearly define the meaning of the
term and I don't find that in your spec.

MR. BUROKER: For any of the terms?

JUDGE LEE: The definition. Yes.

MR. BUROKER: Well, I disagree with that. For
most of the terms, there's clear understanding given. Electronic
mail system is one. There is an explanation of what an
electronic mail system is. There is a description of what --

JUDGE LEE: Let's take gateway switch, for
instance. I mean, of course, anyone reading it could speculate
the inventors probably meant this but I think the kind of clarity
the federal circuit has required for coining your own term is a
lot more specific than that.

MR. BUROKER: Well, I read the case law, I
guess, a little differently. Certainly, if they had gone to the
extent of saying gateway switch -- the definition of gateway
switch is X, that would mean they are being their own
lexicographer.

There are other circumstances in which the court
finds the same thing based upon the circumstances of the
disclosure and this is one of them, we believe, that, you know,
there is a specific definition for what a gateway switch is. It is
a -- it is a switch in a gateway -- in an electric mail system in
this particular patent.

JUDGE LEE: Because I can easily say, well, that's
just an example the inventors offer for a gateway switch and not
say that, you know, whatever examples you gave, that had to be
it, that had to be the definition, so where do we draw the line?

When we see something offered as an
implementation of gateway switch, how do we know -- well, is
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that just an example or is that what the inventors are saying
that's the definition for my gateway switch and, it can't be
anything else than that?

MR. BUROKER: Well, in a re-examination, my
understanding is you are supposed to come up with the broadest
reasonable interpretation in view of the specification.

I believe in almost every instance and I believe
every instance where it is used, it is described in the same way
as having mailboxes that operate to store e-mail for the various
users that are subscribers and that it then routes them onto other
gateway switches or to other networks.

That's the definition that's been given by the
district court and that we are adopting in this particular
case. (Emphasis added.)

Using the claim term “gateway switch” as an example, NTP’s
counsel, Mr. Buroker, acknowledged that the inventors did not go so far as
to set forth any “definition” in the specification. Despite having an
opportunity to do so, Mr. Buroker did not identify any definition which has
been set forth in the specification for any claim term. Yet, it is argued that
there are definitions which make the inventors their own lexicographer.
Counsel was referring to the definitions NTP now seeks to have adopted in
this case, rather than any which are identified or provided in the
specification. The position adopted by NTP abuses the principle of one’s
being his or her own lexicographer. As is already discussed above, the
inventors’ special definitions must be set out in the specification. A
litigation position taken or otherwise agreed to after issuance of the involved
patent does not an inventor’s own lexicographer make.
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As quoted above, NTP’s counsel explained during oral hearing that
NTP has described in its specification a gateway switch that is said to have
additional functionalities than known types of gateway switches. That,
however, does not cause prior art types of gateway switches to cease to be
gateway switches. If NTP wanted the term “gateway switch” to cover only
the specific gateway switch implementation, the one with additional
functionalities as is described in the specification, NTP was free to make a
clear and deliberate limiting definition in the specification. It did not do so.
Similarly, although NTP’s specification describes electronic mail
messages containing only formatted text and having four parts: (a)
destination address, (b) indication of sender, (c) a subject field, and (d)
inputted message text, that description does not cause preexisting electronic
mail messages containing only images and graphics and no text to cease to
be electronic mail messages. Nor does it cause electronic mail messages
which do not disclose sender information or which do not include a subject
field to not be electronic mail messages.
NTP would like to have us treat mere description in the specification,
without any kind of express disclaimer of broader coverage, as limiting
restrictions for what is claimed. For reasons discussed above, NTP's
position is without merit, certainly where the principle of broadest
reasonable interpretation is applied for construing claims. Note also that the
patent statute provides one instance in which a claim element can rightfully
be limited to what is disclosed in the specification and equivalents thereof,
without need to recite the disclosed elements in the claim. See 35 U.S.C. §
112, ¶ 6:
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An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents
thereof.

However, none of NTP’s claim elements at issue is expressed as a means or
step plus function element and NTP makes no such argument in its brief.
During oral hearing, NTP’s counsel made the assertion that for each
claim term in dispute, the corresponding disclosure in the specification
should be treated as a limiting definition for the term rather than an example
(Hearing Transcript 52:26 to 53:9):
JUDGE LEE: Well, sometimes you say example
and sometimes you try to take it back, so is it -- is it only an
example or is it a limiting definition for an e-mail?

MR. BUROKER: In this particular case, it is a
limiting definition for an e-mail.

JUDGE LEE: And you would say that for every
other term that's in dispute here, that in every instance what you
disclose in the spec is a limiting definition for the term that
appears in the claim and not an example of what falls within the
claim?

MR. BUROKER: I would have to look because
there is about 30 some terms but I believe that's the case.

The assertion is remarkable because as is already explained above, (1)
counsel could point to no limiting definition in the specification for any
claim term, (2) NTP did not use means or step plus function language
sanctioned by the sixth paragraph of 35 U.S.C. § 112, for limiting a claim
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element to what is disclosed in the specification and equivalents thereof, and
(3) during reexamination, the broadest reasonable interpretation rule applies.
NTP’s argument is rejected. We will regard embodiments disclosed in the
specification as preferred embodiments and examples, and not as restrictive
limitations for what is claimed.
For instance:
1. The claim term “electronic mail system” does not require a
plurality of processors each running electronic mail programming. A
processor placing an electronic mail message on a transmission mechanism
capable of delivering the message to the intended recipient constitutes an
electronic mail system, one that sends electronic mail. A processor capable
of receiving from a transmission mechanism an electronic mail message
intended for it constitutes an electronic mail system, one that receives
electronic mail. A transmission mechanism capable of routing an electronic
mail message toward the intended recipient constitutes an electronic mail
system, one that transmits or routes electronic mail. Any multiple or
combination of the above also constitutes an electronic mail system. The
term is broad and reads on any aspect of the processing or handling of
electronic mail.
Our interpretation is not inconsistent or incompatible with any
example illustrated in NTP’s specification. That NTP’s specification
describes an electronic mail system which composes, sends, routes, and
receives electronic mail transmitted between originating and destination
processors does not mean that a system which performs just one of those
functions concerning email would not be an electronic mail system. Any
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system which performs an important function with regard to electronic mail
is reasonably deemed an electronic mail system. For example, that
constituent processors in an electronic mail system typically both send and
receive electronic mail does not mean each processor in an electronic mail
system necessarily must both send and receive electronic mail.
2. The claim term “originated information” in an “electronic mail
system” does not have to be a formatted text message having all of the
following four parts:
(a) a destination address identifying the persons, places,
or objects to which the message is directed;

(b) an indication of the sender;

(c) a subject field; and

(d) the inputted message text.

Item (a) is the only necessary element of the four for constituting an
electronic mail message. An electronic mail system could be one which
does not transmit sender information or add sender information to the
electronic mail message, in which case the electronic mail message would
not include an indication of the sender. An electronic mail system could be
one which does not support a subject field in the electronic mail message, in
which case the electronic mail would not include a subject field. An
electronic mail could be blank and have no informational content other than
envelope type information and any attached file, in which case the electronic
mail message would not include inputted text. We see no reason why one
with ordinary skill in the art would regard as absolutely necessary that an
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electronic mail must reveal the sender, include message text, and have a
subject field. Those components are useful if included in electronic mail but
are not necessary.
Note that in the specification of NTP’s ’611 patent (Spec. 2:63 to
3:21), the four above-identified items are described only as “several
common items” that must be entered to send an electronic mail message.
The “common” description implies only a general observation and does not
express a necessary condition for composing and sending a message. That
usually all four items must be present does not set forth a requirement that
all four items must be present in all circumstances at all times.
3. The claim term “other originated information” from outside any
electronic mail system does not have to be a formatted text message at all. It
might comprise a file download of any kind, or simply any data in any
format being transmitted.
4. The claim term “gateway switch” does not require a processor
in an electronic mail system which connects processors in that system and
which has additional functions for supporting other aspects of an electronic
mail system such as receiving, storing, routing and/or forwarding electronic
mail messages. An interface which provides controlled entry of information
into a separate system, device, or another component reasonably constitutes
a gateway switch. That interpretation is not inconsistent or incompatible
with any example illustrated in NTP’s specification. There simply is no
requirement on what must be on one side of the gateway switch, what must
be on the other side of the gateway switch, and what specifically must pass
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through the gateway switch. It is also not necessary that a gateway switch
must run certain electronic mail programming for creating an electronic mail
message of the specific type preferred by NTP.
5. An “originating processor” need not be either a part of or
outside of an electronic mail system or able to process electronic mail
programming, beyond simply having the capability to send out electronic
mail. The processor from which an electronic mail message first originates
to travel on a transmission route to the intended recipient is the originating
processor whether or not it is within the electronic mail system or able to
process electronic mail programming. Adding limitations regarding the
processing of electronic mail programming and relationship to an electronic
mail system is simply not necessary to make sense of the term “originating
processor.” A processor is an originating processor with regard to an
electronic mail message if and when it sends the message on a transmission
route toward a recipient.
6. The claim term “additional processor” is any device which can
process information.
7. The claim term “RF Receiver” or “wireless device” does not
require a device which can be carried by a person outside a home or office.
The term carries no such mobile or portable limitation. Any receiver that
receives electromagnetic signals wirelessly, whether or not it is small
enough to be carried by a person outside a home or office, meets the claim
term.
8. The claim term “RF information transmission network” does
not require more than one transmitter. The term carries no such number
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requirement. Any system that transmits information by radio frequency
electromagnetic signals meets the claim term.
9. The claim term “interface switch” does not require a processor
that transmits electronic mail messages to a wireless system for delivery to a
mobile processor which can be carried by a person outside of a home or
office and which executes electronic mail programming to function as a
destination and/or source of electronic mail. An interface switch, when
broadly construed within reason, is a structural connection or device
between two or more systems, devices, or component parts which routes
information from one side to the other. That broad interpretation is not
inconsistent or incompatible with any example illustrated in NTP’s
specification. There simply is no requirement on what must be in the system
on one side of the interface and what must be in the system on the other side
of the interface.
10. A “destination processor” need not be a part of an electronic
mail system or able to process electronic mail programming beyond simply
having the capability to receive electronic mail. It does not have to be
identified by an address which initiates transmission of information from the
originating processor. It does not have to be a desktop or notebook
computer. Adding limitations regarding the processing of electronic mail
programming and relationship to an electronic mail system is simply not
necessary to make sense of the term “destination processor.” A destination
processor is a processor at a location in the route of transmission of an
electronic mail message where reception of the message constitutes
completion of transmission and where the intended recipient can view the
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message at that location, whether or not the processor is within an electronic
mail system or able to process electronic mail programming. At that
location, the transmitted message is made available at the destination
processor for viewing by the intended recipient without need of further
transmission. A processor located at an intermediate location where
physical access by the intended recipient is not available is not a destination
processor. This interpretation is based on the plain meaning of the word
“destination” and is fully consistent with how the term “destination
processor” is used in NTP’s specification.
The only processors referred to as a “destination processor” in the
specification of NTP’s ’611 patent as filed are end node processors A-N and
end node portable personal computers illustrated in Figures 1 and 8.
Gateway switches and interface switches, which are intermediate nodes in
the electronic mail transmission process are not ever referred to as
destination processors. Furthermore, the terms “gateway switch” and
“interface switch” are used, throughout the specification of NTP’s ’611
patent as filed, in the same sentence in which the term “destination
processor” appears and is used to identify an end node processor A-N or an
end node portable personal computer. For example, the specification states
in column 25, lines 41-48:
The information is transmitted from the receiving interface
switch 304 to the RF information transmission network with an
address of the destination processor, such as a name of a user of
the destination processor A-N, to receive the information which
has been added by either the originating processor A-N, a
gateway switch 14 or the receiving interface switch 304.

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The term “destination processor” is used in the specification of NTP’s
’611 patent as filed to describe that particular end node device to which the
intended user recipient of electronic mail has immediate and direct physical
access when accessing and viewing electronic mail. For instance, the
specification of the ’611 patent states in column 3, lines 30-49:
Upon arrival of the information at the destination processor’s
gateway switch with mailboxes 14, one of two events takes
place. The information is typically stored in the destination
processor’s electronic mailbox [located at a gateway switch at
some other location] for later retrieval by the destination
processor . . .This typically happens as a result of the fact that a
person is not located at the destination processor at the time of
delivery of the message to the gateway switch with mailboxes
14 or the destination processor is not turned on and connected
to the public switch telephone network 12 . . .In the situation
where the destination processor is within a company or
organization, the information may be delivered to the host
computer. The destination processor’s host computer stores the
information until the destination processor calls the host
computer to retrieve the information.

The specification further states that the destination processors may be
transported during operation by a user. (’611 patent 18:56-61). The
physical link between the destination processor and the intended user
recipient of electronic mail is unmistakably required in the context of the
specification of NTP’s ’611 patent as filed.
We have not overlooked the declaration testimony of Dr. V. Thomas
Rhyne relied upon in NTP’s appeal brief in support of NTP’s position on
claim interpretation, i.e., Declaration of Dr. V. Thomas Rhyne under
37 C.F.R. § 1.132 (A8), inclusive of all exhibits to that declaration. We
decline, as did the Examiner, to credit Dr. Rhyne's testimony as it does not
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address our concerns as discussed above. Dr. Rhyne has taken a misplaced
approach to claim interpretation by regarding what is described in the
specification as restrictive claim limitations, without identification of any
clearly limiting definition or disclaimer of broader coverage. Dr. Rhyne has
read each disputed claim term onto the disclosure, i.e., identified what NTP
has disclosed in the patent specification which satisfies or meets the claim
term. But that is no basis to limit what is claimed to what is specifically
disclosed.
It bears mentioning that the USPTO is charged with conducting the
examination of patents (35 U.S.C. § 131). This includes reexamination (35
U.S.C. §305). An essential part of that function is determining the scope of
the claims at issue and their difference from the prior art (35 U.S.C. §103;
Graham v. John Deere Co., 383 U.S. 1 (1966). In the absence of res
judicata directly affecting claims of a patent involved in litigation to which
the USPTO was a full participant, USPTO cannot fail to perform this
executive function or delegate it to another branch of the Government.
The practical impact of this cannot be understated. The initial steps of
patent examination must be conducted at USPTO. To abdicate that role to
any one District Court would be improper. For example, if a District Court
propounded a claim scope which was overly broad; under NTP’s argument,
the USPTO would be bound to that interpretation and unable to perform its
function.
Finally, numerous claim terms in this specific appeal have not been
litigated. NTP’s rationale is wholly inapplicable to those terms.

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B. Rejections based on Telenor ’89
NTP asserts that the copy of Telenor ’89 relied on by the Examiner
contains content which has been altered and manipulated and therefore the
copy not authentic and cannot be relied on to support any rejection based on
Telenor ’89. In Section F of this opinion we address the argument and
evidence on that issue. We conclude that the Examiner properly relied on
the copy of Telenor ’89 contained in the record.
NTP also asserts that Telenor ’89 does not qualify as a printed
publication under 35 U.S.C. § 102(b) because one with ordinary skill in the
art would not have located the document despite an exercise of reasonable
diligence. In Section F of this opinion we also address the argument and
evidence on that issue and reject NTP’s argument. We additionally
conclude that Telenor ’89 is a printed publication under 35 U.S.C. § 102(b).
1. The anticipation rejection based on Telenor ’89
The Examiner finally rejected claims 1-6, 8, 10, 12, 14, 16-27, 30-31,
34-35, 38-39, 42-43, 46-51, 53-63, 65, 67-68, 77-80, and 221-274 under 35
U.S.C. § 102(b) as being anticipated by Telenor ’89.
We affirm-in-part.
Issue
Has NTP shown that the Examiner incorrectly determined that claims
1-6, 8, 10, 12, 14, 16-27, 30-31, 34-35, 38-39, 42-43, 46-51, 53-63, 65, 67-
68, 77-80, and 221-274 are anticipated by Telenor ’89?
Of all NTP claims rejected as anticipated by Telenor ’89, the
independent claims are claims 1, 46, 55. For this anticipation rejection,
claim 1 is representative.
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Claim 1 again reads as follows:
1. A system for transmitting originated information from one of a
plurality of originating processors in an electronic mail system to at least one
of a plurality of destination processors in an electronic mail system
comprising:
at least one gateway switch, the at least one gateway switch storing
originated information received from one of the plurality of originating
processors prior to transmission of the originated information to the at least
one of the plurality of the destination processors;
a RF information transmission network for transmitting the originated
information to at least one, RF receiver which transfers the originated
information to the at least one of the plurality of destination processors;
at least one interface switch, the at least one interface switch being
coupled to at least one gateway switch and to the RF information
transmission network and transmitting the originated information received
from the at least one gateway switch to the RF information transmission
network; and
at least one additional processor with each additional processor being
coupled to at least one interface switch, one of the at least one additional
processor originating other originated information from outside any
electronic mail system for transmission to the at least one of the plurality of
destination processors by the RF information transmission network and an
address of the at least one of the plurality of destination processors to receive
the other originated information transmitted by the RF information
transmission network or an identification number of the at least one RF
receiver receiving the other originated information for transmission to the at
least one of the plurality of the destination processors and transferring the
other originated information to the at least one of the plurality of the
destination processors; and wherein
the interface switch receiving the other originated information
originating from the one additional processor and the address or
identification number adds RF network information used by the RF
information transmission network during transmission of the other
originated information to the at least one RF receiver receiving the other
originated information to the other originated information and
each electronic mail system in the system transmits other information
from one of its plurality of originating processors through a wireline to at
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least one of its plurality of destination processors without transmission using
the RF information transmission network.

Principles of Law
Anticipation under 35 U.S.C. § 102 requires that each and every
element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference. In re Robertson,
169 F.3d. 743, 745 (Fed. Cir. 1999).

Analysis
The Examiner found that Telenor ’89 anticipated the independent
claims 1, 46, and 55-56. (Final Rejection, pages 10, 11 et seq.).

Findings of Fact
Briefly, Telenor ’89 describes a system called Mobile Data Network
(MDN) which transfers messages between fixed terminals and mobile
stations on a store-and-forward basis. (Telenor ’89, Vol. 1, Preface).
The system has been visualized by the Examiner as follows:
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In the MDN architecture, the terminals are up to 100,000 mobile
stations (MS) and up to 5,000 fixed terminals (FT), and the network nodes
are: 1 Operation and Management Center (OMC), up to 50 Mobile Data
Exchanges (MDX), up to 500 Network Adapters (NA) each of which
controls up to 50 Base Stations (BS), and up to 20 MHS InterWorking Units
(MIWU). (Telenor ’89, Vol. 1, p. 2).
Telenor ’89 discloses that the MDN may also be connected to a
separate Message Handling System (MHS). (Telenor ’89, Vol. 1, Preface).
Within the MHS, a user gains access to the MHS to submit and
receive messages by way of a User Agent (UA) and all User Agents interact
with a message transfer system which transfers messages submitted to it.
(Telenor ’89, Volume 8, p. 4, ll. 1-11). The message transfer system
delivers messages from originating UAs to recipient UAs. (Telenor ’89,
Vol. 8, p. 4, ll. 10-13).
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Telenor ’89 also discloses that a MIWU unit is responsible “for the
interwork between MDN and a public MHS service” and that
“communication between an MDN subscriber and a MHS user may be
routed over any of the existing MIWUs.” (Telenor ’89, Vol. 1, p. 6, ll. 1-4).
MIWUs provide the connection between the MHS and the MDN, and all
traffic between subscribers in the MHS and in the MDN are sent through
MIWUs. (Telenor ’89, Vol. 8, p. 11, ll. 3-6). When a message from an
MHS subscriber is destined for a MDN subscriber, the MHS will route the
message to one of the MIWUs. (Telenor ’89, Vol. 8, p. 12, ll. 1-3).
Figure 2 of Volume 1 of Telenor ’89 is reproduced below,
which presents in a simple illustration which part of the MDN is the fixed
wirelined portion and which part of the MDN is a radio network:
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As is shown above, the wireless portion is that segment from a base
station BS to a mobile station MS, based on radio transmission. The radio
network has a wired portion extending from a network adaptor NA to a base
station BS. Telenor ’89 also describes that the radio network of the MDN is
assumed to be a cellular system. (Telenor ’89, Vol. 1, Preface).
In the MDN architecture, each MDX and network adapter NA is
connected to every other MDX and NA in the system. (Telenor ’89, Vol. 1,
p. 7, ll. 1-5). Figure 5 of Volume 1 of Telenor ’89 illustrates that structure
and is reproduced below:
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Each Network Adaptor NA is in turn connected by wire to up to 50
location areas (LCA) each of which may comprise up to 20 base stations
(BS) which transmit messages to mobile stations by radio communication.
(Telenor ’89, Vol. 1, p. 4, ll. 1-4). Figure 3 of Volume 1 of Telenor ’89
illustrates that arrangement and is reproduced below:

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Within the MDN architecture, each MIWU which connects the MDN
to an external message handling system MHS is connected to every MDX,
as is illustrated in Figure 6 of Volume 1 of Telenor ’89, which is reproduced
below:

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In the MDN, every user or terminal belongs to one and only one
licensee and every licensee, including every subscriber of that license, is
related to one and only one MDX, referred to as the Home-MDX (hMDX)
of the licensee. (Telenor ’89, Vol. 1, p. 8, ll. 12-23). Each fixed terminal FT
is directly connected to only one MDX. (Telenor ’89, Vol. 1, p. 8, l. 4).
In the MDN, an MDX is responsible for message switching in the
sense of switching a message to the correct FTs, NAs, other MDXs, or
MIWUs (Telenor ’89, Vol. 1, p. 5, ll. 9-10), and a network adaptor NA is
responsible for message switching in the sense of switching messages from a
mobile station MS to the correct MDX, and from an MDX to the correct
mobile station MS. (Telenor ’89, Vol. 1, p. 5, ll. 17-24).
Telenor additionally describes that different terminals attached to the
MHS will have different abilities. (Telenor ’89, Vol. 8, p. 13, 3.3). Three
specific terminals are discussed, some with more abilities than others. One
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set of abilities includes transmission of the Teletex character set of primary
characters (Id., p. 16, 4.1.2). Others include information encoded as
Videotex3, Facsimile, or encrypted transmissions. (Id. p. 17, 4.2).
Analysis
We now turn to the specific arguments of error raised by NTP.
i. Gateway Switch (Claims 1-45, 56, and 221-239)
NTP first argues the Examiner erred in that Telenor fails to describe at
least one gateway switch. Specifically, NTP states that the MIWU is not a
gateway switch because there is no disclosure of a processor in the
electronic mail system operating
“electronic mail programming” (“a specially designed application
program for creating etc., electronic mail messages” as properly
defined: see my companion declaration on claim construction). (Brief
42).

This definition is exemplary of the inherent problem with accepting
NTP’s definition of what constitutes a gateway switch. NTP has asserted
multiple additional unclaimed limitations, including the open ended “etc.”
and reference to a declaration which references litigation on one of the other
NTP patents. It is simply unreasonable to expect the public to know, by
reason of NTP’s position on what happened in litigation, what NTP has in
mind by “etc” or “my companion declaration.”
In any event, the Examiner has found that the MIWU is a “gateway
switch.” See, e.g. Figure 6 where the MIWU is connected to each MDX of
the network. (Telenor, Vol. 1, p. 8) (shown below). The MIWU is

3 A now obsolete method of transmitting characters to a subscriber’s
television screen from a content provider relying on a centralized packet-
switched network.
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connected to the external message handling network and functions to allow
the external messages into the Telenor system.

NTP has not challenged this connection, or the function of the MIWU,
only that NTP’s definition of what comprises a gateway is not met.
Accordingly, we conclude that this first argument is unpersuasive.
ii. RF Information Transmission Network (All Claims)
NTP next argues that Telenor fails to disclose an RF information
transmission network “for RF transmission to at least one RF receiver”
(Brief 42).
The argument appears to be that “the Telenor documents are
insufficient to enable a person of ordinary skill in the art . . . to build a
system for transmission of ‘originated information’ (which has been defined
. . . as the message text of an electronic mail message . . .) from using an RF
information network to an RF receiver as required by all of the claims of the
‘611 patent.” (Brief 43).
The argument is founded on the assumption that Telenor does not
specifically describe how the communication between the base station and
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radio unit/RPC controller occurs, and one of ordinary skill in the art could
not accomplish that. Even if we accept the underlying assumption that
Telenor does not describe the specific workings of the RF transmission
system, such lack does not establish that one of ordinary skill in the art could
not fashion a RF information transmission network as claimed based upon
the Telenor disclosure.
The test for passing the enabling disclosure requirement under
35 U.S.C. § 112, first paragraph, is whether one reasonably skilled in the art
could make or use the claimed invention from the disclosed subject matter
together with information in the art without undue experimentation. United
States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). A disclosure
can be enabling even though some experimentation is necessary. Hybritech
Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986),
cert. denied, 480 U.S. 947 (1987). The issue is whether the amount of
required experimentation is undue. In re Vaeck, 947 F.2d 488, 495 (Fed.
Cir. 1991); In re Angstadt, 537 F.2d 498, 504 (CCPA 1976). The factors
suitable for consideration in making the enablement determination include
(1) the quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples, (4)
the nature of the invention, (5) the state of the prior art, (6) the relative skill
of those in the art, (7) the predictability or unpredictability of the art, and (8)
the breadth of the claims. See In re Wands, 858 F.2d 731, 737 (Fed. Cir.
1988).
Nothing in the above rationale of NTP is directed to whether the
missing specifics could have been filled in or designed by one with ordinary
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skill in the art without undue experimentation. The question is not whether
Telenor ’89 discloses every implementation detail, but whether one with
ordinary skill in the art, given the disclosure of Telenor ’89, would have
known enough to make and use the invention of the claims rejected as
anticipated by Telenor ’89 without undue experimentation. In that
connection, NTP has not explained (1) what difficulties exist, (2) what kind
of effort would have been required of one with ordinary skill in the art to
come up with what Telenor ’89 is said not to disclose, and (3) why that
effort constitutes undue experimentation rather than routine experimentation.
NTP has only alleged, and has not pointed to or provided persuasive
evidence, as to why one of ordinary skill in the art could not do so based
upon the Telenor disclosure. For the foregoing reasons, we reject NTP’s
argument that Telenor ’89 would not have enabled one with ordinary skill in
the art, without undue experimentation, to build a wireless system which
broadcasts information to a wireless device. Accordingly, we are not
persuaded of error in this regard.
iii. Interface Switch (Claims 1-45 and 221-239)
NTP next argues that Telenor fails to disclose at least one interface
switch coupled to the gateway switch. (Brief 44). In this regard, NTP
specifically appears to argue that the MIWU is not a gateway switch, and
that Telenor does not enable the RF information transmission network,
consequently the interface switch is not coupled to the gateway switch.
As a result, this argument is again not persuasive as it relies upon
NTP’s inaccurate interpretation of the term “gateway switch” to assert that
the gateway switch must have mail programming, which it need not.
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NTP also argues that Telenor ’89 does not explain how an MDN user
actually generates a message as input into the Telenor ’89 system but only
describes possible protocols for data that may be transmitted. (Brief 45).
This argument again assumes that the claim limitation of an electronic mail
system requires that a specific application is required to input a specific
message format having required fields. (Id). We conclude the claim does
not require this element, as discussed above. Accordingly, we are not
persuaded by this contention of error on the part of the Examiner.
To the extent that NTP has not challenged the other claim elements,
we are not addressing those elements as such arguments are waived.
iv) Claims 46 and 55 The Interface Switch Coupled to a Mail System
Claim 46 reads as follows:
46. A system for transmitting originated information from one
of a plurality of originating processors in an electronic mail system to
at least one of a plurality of destination processors in an electronic
mail system comprising:
a RF information transmission network for transmitting the
originated information to at least one RF receiver which transfers the
originated information to the at least one of the plurality of destination
processors;
at least one interface switch, the at least one interface switch
being coupled to the electronic mail system containing the plurality of
the originating processors and to the RF information transmission
network and transmitting the originated information received from the
electronic mail system containing the plurality of originating
processors to the RF information transmission network; and
at least one additional processor with each additional processor
being coupled to at least one interface switch, one of the at least one
additional processor originating other originated information from
outside any electronic mail system for transmission to the at least one
of the plurality of destination processors by the RF information
transmission network and an address of the at least one of the plurality
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of destination processors to receive the other originated information
transmitted by the RF information transmission network or an
identification number of the at least one RF receiver receiving the
other originated information for transmission to the at least one of the
plurality of destination processors and transferring the other originated
information to the at least one of the plurality of destination
processors; and wherein
the interface switch receiving the other originated information
originating from the one additional processor and the address or
identification number adds RF network information used
by the RF information transmission network during transmission,of
the other originated information to the at least one RF receiver
receiving the other originated information to the other originated
information; and
each electronic mail system in the system transmits other
information from one of its plurality of originating processors through
a wireline to at least one of its plurality of destination processors
without transmission using the RF information transmission network.
(emphasis on disputed portion added).

NTP argues that claims 46 and 55 require an interface switch which is
specifically coupled to the electronic mail system and to the RF transmission
network, and that this element is not met. The thrust of NTP’s argument is
that the mobile data exchange (MDX) is not an electronic mail system due to
NTP’s narrow definition of the term and Telenor’s failure to teach sending
of a four part electronic email message. (Brief 44-46).
The Examiner, on the other hand, found that the MDX connects the
MIWU to the RF network, referencing Fig. 1 of Telenor, Vol 1, below.
(Answer 119). See also Fig. 6 above.
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We see no error in the Examiner’s finding that the MIWU functions as
an interface switch being coupled to the email network and RF information
transmission network (NA) (these connections are said in Telenor to be
hardwired or through the PSPDN)(Telenor, Vol 1, p. 2, last paragraph.)
Moreover, the claim requires “originated information”, not an electronic
mail message. Accordingly, this argument is also unpersuasive.
NTP also argues that Telenor does not meet the “limitation requiring
that “the originating information is transmitted in association with an
address of the one interface from the one of the plurality of originating
processors.”” (Brief 46.). NTP has not identified which of its claims this
argument is directed towards, and we are unable to locate this language in
either of claims 46 and 55. We decline to speculate on what NTP may have
meant by this argument, and because it does not apply to the claims
specifically argued, we find it unpersuasive of error.
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We note that NTP has not challenged the other claim limitations;
accordingly such arguments are waived with regards to these claims and we
need not address those limitations here.
v. Identification of an RF Receiver (Claims 2-5)
Claim 2 reads as follows:
2. A system in accordance with claim 1 wherein:
the identification number of the at least one RF receiver
receiving the other originated information is added to the other
originated information originated by the one additional processor
originating the other originated information.

NTP argues that the only discussion of addressing RF receivers
indicates that it would occur further downstream from the originating
processor or one additional processor, citing the Declaration of Dr. Rhyne,
paragraph 40. (Brief 47).
To meet those requirements of claims 2-5, the Examiner equates the
destination processor address in Telenor ’89 with identification of the RF
receiver. (Final Rejection 14:7-11; Answer 127:5-8)(Citing Telenor ’89,
Vol. 1, 3.6.1.1-3.6.1.3 and pp. 25-26). We disagree with this position.
We have reviewed all material referenced by the Examiner and find
that the Examiner has not demonstrated that identifying the destination
processor automatically equates to the identification of the RF receiver. In
the context of NTP’s ‘611 patent, however, the RF receiver, has its own
identity apart from the processor to which it is connected and also from the
user for whom the transmission is intended. (‘611 patent 18:39-40). While
the identification of an associated wireless device may be looked up in a
table or directory, based on identification of the mobile station terminal, the
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mobile station address cannot reasonably be regarded as identification of the
wireless device. While Telenor does describe addressing either the terminal
or the user logged into the terminal, this does not describe the identification
of the RF receiver. (Telenor ’89 Vol. 1, 25, 3.6.1.1).
The Examiner notes (Answer 127) that according to the specification
of the NTP ‘611 patent the address of the destination processor receiving the
transmitted electronic mail is “preferably” the identification number of the
RF receiver. That disclosure, however, only further supports the position
that the recipient address identifying the mobile station which is to receive
the electronic mail need not specifically be an identification of the RF
receiver.
It is true that the identification of the wireless device must be
broadcasted by the wireless system for the wireless device to recognize a
wireless transmission to it. But that does not mean the identification of the
wireless device must be added by the one additional processor to be
transmitted to the interface switch and then to the wireless system of Telenor
’89 which includes the Network Adaptors NA and Base Stations BS. The
Examiner has not accounted for the possibility that a processor within the
wireless system, either at a NA or a BS, or even at an interface portion of the
wireless system, may perform the necessary lookup to determine the
identification of the associated RF receiver for a mobile station as the
intended recipient.
Accordingly, the rejection of independent claims 2-5 as anticipated by
Telenor ’89 cannot be sustained. The rejection of the claims which depend
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therefrom and are also rejected under this rejection, namely claims 8, 10, 12,
14, 18-25, 30-31, 34-35, 38-39, and 42-43, is reversed.
vi. Assembling into a Packet and Transmitting (Claims 6, 8, 10, 12,
14, 51, 63, and 65)
Claim 6 reads as follows:
6. (Original Patent Claim) A system in accordance with claim 1
wherein:
the interface switch receiving the other originated information
stores the originated information which has been received from the
plurality of originating processors and the other originated
information, assembles the originated information received from the
plurality of the originating processors and the other originated
information into a packet and transmits the packet to the RF
information transmission network.

NTP argues that multiple messages in Telenor are not bundled for
transmission and therefore is not a “packet” as defined in the ‘611 patent.
(Brief 47-48).
The Examiner points to the group message handling at Telenor ‘89,
Vol. 1, pages 41-42, which splits a group message into several messages.
While this argument is not directly on point, the Examiner also points to the
MDX handling a plurality of messages from a plurality of originating
processors. (Answer 129). Moreover, the Examiner has found that
terminals disclosed in Telenor are the “additional processors” which have
the capability to access the Telenor messaging services. (Answer 11). The
processors send messages which include a numeric address of the intended
mobile destination processor (Id., citing Telenor ‘89, Vol. 1 p. 29 and Vol. 8
p. 22.).
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NTP has offered no persuasive evidence to contradict the Examiner’s
findings. Accordingly, we are not persuaded of error in this regard.
vii. Multiple Email Systems (Claims 17, 19, 21, 23, 25, 27, 31, 35, 39,
43, 54, and 67)
Claim 17 reads as follows:
17. (Original Patent Claim) A system in accordance with claim 1
further comprising:
another electronic mail system; and wherein the at least one of
the plurality of destination processors is within the another electronic
mail system.

The Examiner has found that the MHS network connected to the
MDN network enables plural email services to connect and communicate
email to the MDN network using a plurality of email services which
subscribe to the MHS mail system. (Answer 16).
NTP urges that “it is very unclear what the two distinct electronic mail
systems are according to the Office” (Brief 48).
We observe that it is apparent from a review of the evidence pointed
to by the Examiner that any incoming information from a public network
from a computer originating electronic mail can come in through the MIWU.
(see, e.g. Telenor ‘89, Vol. 1, Fig 1). That originating processor comprises
the “first electronic mail system” which sent the originated information. The
NA-fed base stations would then be the “another system.”
NTP has not provided persuasive reasoning or pointed to evidence to
the contrary, accordingly, on balance we find that the evidence of record
supports the Examiner’s findings, and thus this argument is unpersuasive of
error on the part of the Examiner.
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viii. Stored Programming (Claims 77-78)
Claim 77 reads as follows:
77. A method in accordance with claim 55 wherein:
the transfer occurs under control of a program stored by the at
least one destination processor and makes the other originated
information accessible to application programs stored within the at
least one destination processor.

The entirety of NTP’s argument is directed to an alleged deficiency in
the cited art, specifically - “As described above, these further limitations are
not enabled because there is no disclosure of a “control program” operating
on a destination processor to control transmission to an RF receiver. See
Rhyne Supplemental Declaration ¶ 45” (Brief 49). Dr. Rhyne in turn states
no more than the above.
As noted above, this allegation is insufficient to establish a lack of
enablement. Accordingly, this argument is unpersuasive. We therefore
affirm this rejection as it applies to claims 77 and 78.
ix. Claims 221-222
Claim 221 reads as follows:
221. A system in accordance with claim 1, wherein:
after reception of electronic mail, by the at least one interface
switch, including said originated information from the electronic mail
system, information is deleted from the electronic mail including the
originated information prior to transmission by the RF information
transmission network.

The Examiner found that when the MDX receives an incoming mail
message and the autoforward feature is activated, the MDX removes the old
address and inserts the new address using the RF network, which reflects the
RF network destination processor. (Final Rejection 18; Answer 19). NTP
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urges that “substituting the destination address with other destination
addresses does not constitute removal.” (Brief 49). The basis for this
conclusory statement is said to be the Rhyne Supplemental Declaration,
paragraph 46, which again recites the conclusion. Given that Dr. Rhyne
does not explain his opinion sufficiently, we do not credit his testimony.
Accordingly, the Examiner’s finding remains unrebutted. This argument
likewise is unpersuasive.
We therefore affirm this rejection as it applies to claims 221-222.
The rejection of claims 1 ,6, 16, 17, 26, 27, 46-51, 53-63, 65, 67-
68, 77-80 and 221-274 under 35 U.S.C. §102(b) as being anticipated by
Telenor ’89 is affirmed.
The rejection of claims 2-5, 8, 10, 12, 14, 18-25, 30-31, 34-35, 38-39,
and 42-43 as anticipated by Telenor ’89 is reversed.

2. The obviousness rejection based on Telenor ’89 and May
Claims 69-76 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Telenor and May.
We affirm.
Issue
Did the Examiner err in determining claims 69-76 were unpatentable
under the combination of Telenor and May under 35 U.S.C. §103(a)?
Principles of law
In KSR, the Supreme Court rejected the rigid application of the “teaching
suggestion or motivation” (TSM) test, instead favoring the “expansive and
flexible approach” used by the Court. KSR Int’l Co. v. Teleflex Inc., 550
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U.S. 398, 415 (2007). Based on its precedent, the Court reaffirmed the
principle that “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. The Court's opinions in United States v. Adams, 383 U.S. 39
(1966), Anderson’s Black Rock Inc. v. Pavement Salvage Co., 396 U.S. 57
(1969) and Sakraida v. Ag. Pro, Inc., 425 U.S. 273 (1976) are instructive
when the question of whether an application claiming the combination of
elements of prior art is obvious. KSR at 1740.
In Adams, “[t]he Court recognized that when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” Id. at 1740 (citation omitted)
(The Court ultimately found unexpected results resulting from prior art
warnings to be dispositive of nonobviousness). In Anderson’s Black Rock,
the Court concluded that the claimed invention combining two pre-existing
elements (radiant-heat burner and paving machine) ‘did not create some sort
of new synergy’; each element functioned as expected. Id. at 1740. “The
two in combination did no more that they would in separate, sequential
operation”. Id. at 1740 (citations omitted).
In Sakraida, “the Court derived from its precedents the conclusion that
when [the claimed invention] ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.” Id. at 1740 (citations omitted).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
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either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. [A] Court must
ask whether the improvement is more than the predictable use
of prior art elements according to their established functions.

KSR at 1740.
Findings of Fact
Claim 69 depends from claim 55 and recites as follows:
69. A method in accordance with claim 55 wherein:
the at least one RF receiver receives the other originated
information when the destination processor is turned off and transfers
the other originated information to the at least one destination
processor at a time subsequent to reception of the originated
information by the at least one receiver when the destination processor
is turned on.

May Figure 1 is reproduced below:
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The Examiner found that May teaches a portable RF receiver
accessory for portable computing devices which receives and stores
information when the computing device is turned off. (Final Rejection 29).
The Examiner concluded it would have been obvious to modify the Telenor
receiver to receive messages while the processor was turned off in order to
conserve power. (Id.).
Analysis
NTP urges that this combination is improper because “there is no
teaching or suggestion in neither [sic – either] the Telenor documents, the
May patent, nor the knowledge of one of ordinary skill in the art…” (Brief
49). This argument is without merit. The Examiner has provided a rationale
for combining the references, and supported the rationale with evidence.
NTP also asserts, without citation to evidence, that May fails to teach
or suggest the specific claimed feature of receiving other originated
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information when the destination processor is turned off and transferring the
other originated information when the destination processor is turned on.
Given the disclosure in May, column 2, lines 3-13, expressly discussing the
concept of powering up the computer to receive the page message within a
signal, we find that the argument is without merit.
On balance, upon weighing all of the evidence together as a whole,
including the evidence of nonobviousness which we discuss in another
section of this opinion, we conclude that NTP has not shown error in the
rejection of claims 69-76 as unpatentable under the combination of Telenor
and May under 35 U.S.C. §103(a).
Accordingly, we affirm this rejection.
C. The Rejections Based on Verjinski
1. The Examiner finally rejected claims 1-5, 16-25, 46-50, 53-62, 67-68
and 77-80 under 35 U.S.C. § 103(a) as obvious in view of the article
titled “PHASE, A Portable Host Access System Environment” by
Richard Verjinski, published in IEEE, October 18, 1989 (“Verjinski”)
in view of “The KA9Q Internet Software Package” Bdale Garbee, May
8, 1989 (“Garbee.”)
We affirm.

Issue
Has NTP shown error in the Examiner’s rejection of claims 1-5, 16-
25, 46-50, 53-62, 67-68 and 77-80 under 35 U.S.C. § 103(a) as obvious in
view of Verjinski and Garbee?

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Findings of Fact
Verjinski discloses a system called Portable Host Access System
Environment (PHASE) which enables portable computers (“PCs”) to change
their point of connection to the Internet and continue to be accessible by a
fully specified Internet domain-name. (Verjinski 0806:1:2-5). In the
context of its disclosure, Verjinski also refers to portable PCs as “portable
hosts.” (Verjinski 0806:1:30-31).
In Verjinski’s system, a portable PC user dials in by telephone into a
Portable Host Access Component (PHAC) to gain access to the Internet, and
the PHAC acts as an interface for connecting the portable PC to the Internet.
(Verjinski 0806:1:33-36). When a portable PC is connected to the PHAC by
telephone, the PHAC assigns a temporary IP address to the portable PC, and
the portable PC then sends its name and IP address to a Dynamic Domain
Name Server (DDNS). (Verjinski 0807:1:30-33, 0808:2:43-45). Verjinski
describes that in one embodiment the telephone connection between the
portable PC and the PHAC can be through a conventional wired telephone
system and in another embodiment through a cellular telephone. (Verjinski
0808:2:35-37 and 0809:2-4).
Verjinski describes that its PHASE architecture consists of three main
components: the DDNS, the PHAC, and the portable hosts, i.e., the portable
PCs. (Verjinski 0807:1:6-7). Figure 1 of Verjinski is reproduced below:

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“The PHAC is connected to a Local Area Network (LAN) that
supports TCP/IP protocols and is connected to the Internet through a
gateway.” (Verjinski 0807:1:9-11). Alternatively, the PHAC may be
directly connected to an Internet Packet Switch Node. (Verjinski 0907:1:11-
12). The PHAC serves as the access point for portable hosts, i.e., the
portable PCs, to connect to the internet. (Verjinski 0807:1:8-9).
As is shown in Figure 1, the PHAC communicates with remote hosts
on the internet through a Local Area Network (LAN) which implements the
TCP/IP protocol. (Verjinski 0807:1:9-11). As is stated in Verjinski
(Verjinski 0807:1:39-43):
It is the job of the PHAC to recognize TCP packets that contain
the IP address of each portable host connected to it. Packets
destined for a connected portable host must be demultiplexed
and sent on the the appropriate X.PC channel.

The DDNS is a process that can be run on any Internet host, and the
host which runs the DDNS does not have to reside on the same server as the
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PHAC. (Verjinski 0807:1:16-18). A remote host on the internet sends a
query to the DDNS about a portable host, and the DDNS responds to the
query by sending the current temporary IP address of the requested portable
host back to the remote host making the query. (Verjinski 0807:1:21-25).
The DDNS stores the domain name and current IP address of the portable
hosts, and each portable host may update its IP address in the DDNS data
base within seconds of connecting to the network. (Verjinski 0807:2:23-26).
Although only one PHAC is shown in Figure 1 of Verjinski, it is
understood that there are multiple PHACs to which a portable host may
make a telephone connection, depending on its current location. Verjinski
explains that after disconnecting from one PHAC and then reconnecting to
another PHAC, a portable host is assigned a new temporary IP address.
(Verjinski 0808:2:30-33). Verjinski describes that PHASE enables portable
hosts to attach to any PHAC connected to a subnet of the Internet and that
having many PHACs dispersed in the field increases the availability of a
connection in a local calling area. (Verjinski 0807:1:2-5).
Similarly, although only one remote host is illustrated in Figure 1, it is
understood that there are a plurality of remote hosts on the internet which
may desire sending a message to a portable host. Verjinski describes that as
a result of its technology, remote hosts can initiate connections to portable
hosts (Verjinski 0806 1:16-17), that the PHAC routes packets between
remote hosts on the internet and portable hosts (Verjinski 0807:1:12-14), and
that domain name queries for portable hosts come from remote hosts through
the local gateway to the DDNS. (Verjinski 0807:1:21-23).
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Verjinski discloses two embodiments for the telephone connection
between a PHAC and the portable hosts, a wired telephone connection
configuration and a cellular telephone configuration. Specifically, in
describing a sample communication session between a remote host and a
portable host (Verjinski 808:2:34-38), Verjinski states:
The following is a future scenario of a SMTP [Simple
Mail Transfer Protocol] session integrated with the DDNS and
the IP Update protocol. The current PHASE works with a
conventional telephone system instead of the cellular telephone
depicted in this scenario. A sample SMTP session is generally
illustrated in figure 4. (Emphasis added.)

Thus, in a current scenario, a first embodiment, the connection
between the PHAC and the portable hosts is through conventional wired
telephone lines. But in a future scenario, a second embodiment, a cellular
telephone connection replaces the wired telephone connections. The
alternatives are, in fact, mutually exclusive. Verjinski does not disclose that
in a single embodiment some connections from a PHAC to a portable host
are via wired telephone lines and some other connections are via a cellular
link.
As an example of the future scenario, Verjinski discusses the sending
of electronic mail by a military commanding officer as a remote user on the
internet to a field officer as a portable host. (Verjinski 0809:1-25). It is
understood that there may be multiple such persons on a plurality of remote
hosts wanting to send an electronic mail message to the field officer on a
portable host. The first step in that scenario involves the field officer’s using
a cellular phone to call a PHAC. (Verjinski 0809:2-4) When
communication through the cellular phone is established, the PHAC sends
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the portable host a unique IP address and the portable host immediately
updates the DDNS with the new IP address. (Verjinski 0809:4-7). The
portable host then opens a passive connection on its SMTP port and waits, as
it is ready to receive messages from remote hosts on the internet through the
PHAC. (Verjinski 0809:7-9).
When the commanding officer decides to send an email message to
the field officer, the commanding officer’s computer sends a query to the
DDNS for the current IP address of the field officer’s portable PC and the
DDNS returns the temporary IP address of the portable PC. (Verjinski
0809:9-12). Then the commanding officer’s SMTP implementation
connects to the portable host and communicates with the SMTP on the
portable host for sending the email in a SMTP mail session. (Verjinski
0809:12-14). Once the SMTP mail session is complete, the field officer
reads the email. (Verjinski 0809:14-16).
As described in Verjinski and explained above, the entire
configuration shown in Verjinski’s Figure 1, sans the cellular telephone
network in the cellular telephone embodiment, is an electronic mail system
which includes a plurality of originating processors which send electronic
mail and a plurality of destination processors which receive electronic mail.
Alternatively, because the commanding officer’s SMTP mail program
implementation on a computer enables the composition and sending of an
electronic mail message to a portable host, a number of such computers
together constitute an electronic mail system containing a plurality of
originating processors. Still further in the alternative, each such computer
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itself constitutes an electronic mail system and there is a plurality of
electronic mail systems including a plurality of originating processors.
Similarly, each PHAC and the portable computers it serves together
constitute an electronic mail system including a plurality of destination
processors. The destination processors are the portable computers which
receive electronic mail from the remote hosts through the PHAC and the
cellular telephone network.
The cellular telephone system connecting a PHAC and with portable
computers constitutes an RF information transmission network and the
cellular telephone used by the field officer in the above-described example
to connect a portable host to a PHAC constitutes an RF receiver.
In that configuration, the PHAC constitutes an interface between the
electronic mail system and the RF information transmission network.
Information from a remote host on the internet and destined for a portable
host must be directed first to the PHAC to which the portable host is
connected, and the PHAC processes that information and sends it onward to
the portable host on an appropriate channel through the telephone network.
(Verjinski Figs. 1-2; 0807:1:38-43).
Verjinski discloses that the design of the PHAC allows eight X.PC
connections to portable hosts via RS-232 ports and modems, and that the
X.PC protocol permits up to fifteen logical channels per connection to be
established if needed. (Verjinski 807:35-38). Verjinski also states that the
PHAC can best be described as a gateway for portable hosts. (Verjinski
807:27-28).

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Garbee describes file transfer protocol (FTP) as a utility which can be
run any time a user wants to obtain a file residing on another computer.
(Garbee 4). On pages 4-5, Garbee identifies three “most important” and
“traditional” TCP/IP services (1) File Transfer, (2) Remote Login, and (3)
Computer Mail, and states: (Garbee 5:37-39):
These services should be present in any implementation of
TCP/IP, except that micro-oriented implementations may not
support computer mail. (Emphasis added).

The Examiner specifically cited to the bolded portion of the above-quoted
text. (Final Rejection 33:28-29).
And regarding file transfer, Garbee states (Garbee 4:39-50):

file transfer. The file transfer protocol (FTP) allows a user on
any computer to get files from another computer, or to send
files to another computer. Security is handled by requiring the
user to specify a user name and password for the other
computer. Provisions are made for handling file transfer
between machines with different character set, end of line
conventions, etc. This is not quite the same thing as more
recent “network file system” or “netbios” protocols, which will
be described below. Rather, FTP is a utility that you run
anytime you want to access a file on another system. You use it
to copy the file to your own system. You then work with the
local copy. (See RFC 959 for specifications for FTP.)

Thus, Garbee teaches files as a separate source of information from
computer mail, and describes both file transfer and computer mail as
services that should be implemented on any system executing TCP/IP
protocol.
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The Examiner determined that the address or identification number of
the destination must be used to initiate any FTP session and that the FTP
protocol uses standard TCP/IP. (Final Rejection 33:19-26).
On page 16, Garbee describes that while computer mail is typically
sent on one connection, the file transfer protocol FTP involves two
connections. (Garbee 16:38-44). While the data for transfer makes use of
one connection, commands about the transfer such as a status check or an
abort make use of another. (Garbee 16:41-45). In that regard, Garbee states
(Garbee 16:46-49): “However file transfers often take a long time. The
designers of the file transfer protocol wanted to allow the user to continue
issuing commands while the transfer is going on.”
Based on the teachings of Garbee, the Examiner reasoned that one
with ordinary skill in the art would have recognized FTP as beneficial due to
increased redundancy, reliability, flexibility, and security (Final Rejection
33, last paragraph).
Analysis
The Examiner concluded that it would have been obvious to one of
ordinary skill in the art at the time the invention was made to add FTP
software to the local and remote portable PCs connected to each other in a
TCP/IP session to, inter alia, allow users to share files. (Final Rejection 33).
Claim 1 is representative, and again reads as follows (Brief
Appendix):
1. A system for transmitting originated information from one of a
plurality of originating processors in an electronic mail system to at least one
of a plurality of destination processors in an electronic mail system
comprising:
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at least one gateway switch, the at least one gateway switch storing
originated information received from one of the plurality of originating
processors prior to transmission of the originated information to the at least
one of the plurality of the destination processors;
a RF information transmission network for transmitting the originated
information to at least one, RF receiver which transfers the originated
information to the at least one of the plurality of destination processors;
at least one interface switch, the at least one interface switch being
coupled to at least one gateway switch and to the RF information
transmission network and transmitting the originated information received
from the at least one gateway switch to the RF information transmission
network; and
at least one additional processor with each additional processor being
coupled to at least one interface switch, one of the at least one additional
processor originating other originated information from outside any
electronic mail system for transmission to the at least one of the plurality of
destination processors by the RF information transmission network and an
address of the at least one of the plurality of destination processors to receive
the other originated information transmitted by the RF information
transmission network or an identification number of the at least one RF
receiver receiving the other originated information for transmission to the at
least one of the plurality of the destination processors and transferring the
other originated information to the at least one of the plurality of the
destination processors; and wherein
the interface switch receiving the other originated information
originating from the one additional processor and the address or
identification number adds RF network information used by the RF
information transmission network during transmission of the other
originated information to the at least one RF receiver receiving the other
originated information to the other originated information and
each electronic mail system in the system transmits other information
from one of its plurality of originating processors through a wireline to at
least one of its plurality of destination processors without transmission using
the RF information transmission network.

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i. Wireline
NTP argues that Verjinski does not disclose or suggest
communication of data without using the RF information transmission
network. (Brief 71). In particular, NTP urges that there is no teaching or
suggestion that Verjinski’s channels connect to a wireline that does not use
an RF transmission network. (Id.). This argument is unpersuasive.
First, we observe that in KSR, the Supreme Court rejected the rigid
application of the “teaching suggestion or motivation” (TSM) test recited by
NTP. We focus on the “expansive and flexible approach” used by the Court.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). Based on its
precedent, the Court reaffirmed the principle that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id.
Verjinski describes both scenarios as alternatives – the wireline
scenario and the cellular future scenario. Accordingly, the disclosure of both
possibilities is sufficient evidence to support the Examiner’s conclusion that
using data communication with or without using the RF transmission
network would have been obvious to one of ordinary skill in the art at the
time the invention was made. NTP has not provided any persuasive
evidence to the contrary.
Accordingly, we disagree with NTP’s first argument and find it
unpersuasive of error.
ii. Interface Switch
NTP next argues that Verjinski fails to disclose or suggest an
“interface switch being coupled to at least one gateway switch and to the RF
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information transmission network.” (Brief 72). Specifically, NTP says the
PHAC is not coupled to a gateway switch or RF network because a single
computer is not a mail system as properly defined. (Brief 72-73). NTP does
not provide a citation for this assertion other than Dr. Rhyne’s declaration
paragraph 20 which adds no evidence.
The Examiner, on the other hand, found that the PHAC allows a
portable host (portable computer) to communicate using SMTP to read
newly arrived mail. (Answer 163).
We find that Verjinski describes this at least at page 806, column 1,
lines 9 et seq. The PHAC also communicates over the internet to other email
systems. (Id.). Each of these layers can fairly be construed as the interface
switch (i.e. the internet connection), the gateway switch (PHAC), and then
the RF network (in the field RF communications link).
NTP has not explained why such an arrangement does not render
obvious the claimed subject matter.
On balance, the evidence of record supports the Examiner’s position,
and we find no error shown in this rejection.
iii. Garbee as Nonanalogous Art
Without elaboration, NTP states that Garbee cannot be combined with
Verjinski because it relates to FTP protocols, not electronic mail system
components. (Brief 73). NTP then concludes that Garbee is not in the same
field of endeavor as the NTP patents. (Id.).
Art is analogous if it is "reasonably pertinent to the particular problem
with which the inventor is involved," In re Paulsen, 30 F.3d 1475, 1481-
1482 (Fed. Cir. 1994).
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The Examiner observes that email transmission occurs between
processors of email systems and transmission of other information between
processors would occur by FTP between processors, and as such the art is
reasonably related to the particular problem being addressed by the
applicant. (Answer 166).
In this case, the applicant is faced with the problem of transmitting
information between processors. (‘611 abstract). FTP related processing
and TCP/IP based communications are pertinent to that issue. We therefore
agree with the Examiner that Garbee is appropriately considered analogous
art.
iv. Garbee as curing Verjinski’s Deficiencies
NTP asserts that Garbee does not cure the deficiencies of Verjinski as
they relate to an interface coupled to a gateway switch and a transmission
network. (Brief 73-74). As we have found no error in the determination that
Verjinski describes those elements, we find this argument again
unpersuasive.
v. Garbee as disclosing “at least one additional processor…”
NTP urges that Garbee does not disclose at least one additional
processor that originates information and an address of the destination
processor to receive information. (Brief 74-75). However, this argument of
NTP fails to recognize the broad scope of claim 1.
The “at least one additional processor” originates “other originated
information” for transmission to the destination processors. This
information does not need to be an email, just directed to a destination
processor. Accordingly, a distant (“originating”) processor being queried by
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FTP for files would fall within the scope of this claim limitation. The
TCP/IP or X.25 protocol requires the physical address of a device to be
included at local network interfaces in order for the data to be directed to the
end destination. (Answer 168). This evidence supports the Examiner’s
conclusion of obviousness of the subject matter of these claims.
NTP has provided no persuasive reasoning or argument otherwise,
choosing to rely upon its interpretation of the claim terms. Accordingly, we
are not persuaded of error in this regard.
vi. Identification of the RF Receiver (Claim 2)
Claim 2 reads as follows:
2. A system in accordance with claim 1, wherein:
the identification number of the at least one RF receiver
receiving the other originated information is added to the other
originated information originated by the one additional processor
originating the other originated information.

NTP asserts that “PTO provides no support for this assertion.” (Brief
76). As noted above and found by the Examiner, the known network
protocols require the physical address of a device to be included. An FTP
transfer could not occur otherwise (Final Rejection, 33). As Verjinski
describes the use of the IP address of a portable host which is then connected
by cellular telephone, NTP has not persuaded us of error in the Examiner’s
conclusion that addition of the identification number of the RF receiver
would have been obvious.
vii. Dependent Claims 4, 5, 22, and 24 – RF address added by
Interface Switch
Claim 4 reads as follows:
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4. A system in accordance with claim 1 wherein:
the identification number of the at least one RF receiver
receiving the other originated information is added to the other
originated information originated by the additional processor by the
interface switch receiving the other originated information and the
address or the identification number from the one additional
processor.

The Examiner found that it would have been obvious to have the
PHAC of Verjinski add the final RF network information corresponding to
the physical address of the receiver on the network, citing RFC 791 IP
Sections 2.3, pages 5-7. (Answer 34). Verjinski does update the DDNS with
the portable computer’s temporary IP address when in RF mode (p. 807,
bottom right column). In order to deliver the data, this address must be
added during transmission. Again, NTP has not provided persuasive
reasoning or sufficient credible evidence to the contrary.
Accordingly, this argument is unpersuasive of error.
viii. Second Email Network (Claims 17, 19, 21, 23, and 25)
Claim 17 reads as follows:
17. A system in accordance with claim 1 further comprising:
another electronic mail system; and wherein the at least one of the
plurality of destination processors is within the another electronic mail
system.

NTP asserts that the PTO erred in finding that the remote host is in a
different email system from the local PHAC, the destination processor is in
another electronic mail system, and the PHAC and portable host are not an
electronic mail system. (Brief 77). What this argument overlooks is that
claim 17 recites only that one destination processor need be in another email
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system. The Examiner found one PHAC system destination processor in the
local network to be a second email system from a remote host. (Final
Rejection 37). To the extent NTP may be arguing that a second email
system would not have been obvious to one of ordinary skill in the art, we
are unpersuaded by that argument.
ix. Other Dependent Claims
Pages 77-82 of the brief contain multiple subsections where NTP
asserts that the dependent claims are patentable for the same reasons, or that
the claims recite additional elements and are thus additionally patentable.
These are not separate arguments for patentability within the meaning of 37
CFR §41.37(c)(vii).
On balance, upon weighing all of the evidence together as a whole,
including the evidence of nonobviousness which we discuss in another
section of this opinion, we conclude that NTP has not shown error in the
rejection of claims 1-5, 16-25, 46-50, 53-62, 67-68 and 77-80 under 35
U.S.C. § 103(a) as obvious in view of Verjinski and Garbee.
Accordingly, we affirm this rejection.
2. The Rejection of claims 6-15, 26-45, 51-52, and 63-66 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Verjinski,
Garbee, and prior art described in the ‘611 patent.

We affirm.
Issue
Has NTP shown error in the Examiner’s rejection of claims 6-15, 26-45, 63-
66 under 35 U.S.C. § 103(a) as obvious in view of the combination of
Verjinski, Garbee, and the admitted prior art?

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Additional Findings of Fact
Claim 6 reads as follows:
6. A system in accordance with claim 1 wherein:
the interface switch receiving the other originated information
stores the originated information which has been received from the
plurality of originating processors and the other originated
information, assembles the originated information received from the
plurality of the originating processors and the other originated
information into a packet and transmits the packet to the RF
information transmission network.

NTP ‘611 specification has several prior art figures. Figure 6 is of
particular relevance to this inquiry and is reproduced below:

The Examiner found that the ‘611 specification admitted that the
construction of packet transmission was known prior art to the inventors,
citing Figure 6 and NTP ‘611 7:27-53; 16:66-17:60. (Answer 45) The
Examiner also found that the use of a batch of pages, with a page containing
a message for a particular receiver, was known prior art to the inventors,
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citing NTP ‘611 6:62-7:53, 8:21-39, 9:37-65 and 17:9-14. (Id.)The
Examiner additionally found that Buffering, or storage, or messages to
construct a batch of messages was known through prior art figures 3-5 and
13:24-40. Lastly, the Examiner found that the use of a batch of messages, or
packet, directed to one switch to service a region was known as a lower cost
alternative and more efficient than conventional connections in networks,
citing NTP ‘611 6:55-59. (Id.)
Figure 3 of NTP ‘611 is reproduced below:
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NTP ‘611 describes in the context of a telephone call initiated paging
method that the local access and transport area (“lata”) switches formulate a
page with the destination specified by geographically descriptive digits of
the identification code inputted with the call. Messages originating at the
local switch are packetized and transmitted outwards, and the reverse occurs
for inbound messages, which are sent to the appropriate pager. (NTP ‘611-
6:60-10:50).
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NTP argues only that “Verjinski in view of Garbee fails [to] render
these independent claims [1, 46, and 55] obvious for the above reasons. The
Alleged Admitted Prior Art explicitly fails to provide an “interface” as
defined above. In particular, there is no element in the alleged admitted
prior art that is coupled to a gateway switch (or electronic mail system), as
defined above, and to the RF information transmission network” (Brief 82).
The prior art described in the NTP ‘611 patent is not relied upon for
describing the interface, and we have found the previous arguments
regarding the definition of the term “interface” unconvincing. Accordingly,
the Examiner’s findings and conclusions are supported by the evidence of
record, and remain unrebutted.
On balance, upon weighing all of the evidence together as a whole,
including the evidence of nonobviousness which we discuss in another
section of this opinion, we conclude that NTP has not shown error in the
rejection of the claims
We affirm this rejection.
Claims 27, 31, 33, 35, 37, 39, 41, 43, and 45
Claim 27 reads as follows:
27. A system in accordance with claim 6 further comprising:
another electronic mail system; and wherein
the at least one of the plurality of destination processors is
within the another electronic mail system.

The Examiner found that Verjinski teaches remote host connecting
through the Internet to the destination processor PHAC network, and
therefore, the remote host would be on a different electronic mail system
from the local PHAC. (Final Rejection 41).
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Verjinski figure 1 is reproduced below:

Figure 1 illustrates that through the internet a remote host is connected
to the PHASE system.

The PHASE System is designed to provide a solution to mapping
portable computers with internet protocol addresses. (806, Abstract). At
page 808, col. 2, the PHASE description recites:
The default IP address can also be used in conjunction with the DDNS
when a user has an account on another machine on the internet.
Making the default address of the portable host be the IP address of
another machine allows the user to receive mail at his permanent
(default) address until a connection to the internet is made with a
portable host.

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In the context of Verjinski, then, it is reasonable to conclude, as did
the Examiner, that the hosts are principally email hosts for sending email.
NTP argues that claims 27, 31, 33, 35, 37, 39, 41, 43, and 45 require
the destination processor to be in “another” electronic mail system, and that
there is no support for the assertion. (Brief 82-83). This argument fails to
take into account the entire context of Verjinski as facilitating email between
hosts, and is unpersuasive. Moreover, the rejection is not an anticipation
rejection, but a rejection based on 35 U.S.C. §103. To the extent that NTP
may be arguing that Verjinski’s disclosure of a remote host does not render
the claimed subject matter of another email system being connected to the
claimed email system, we reject that argument.
NTP also argues that the PHAC and the portable host are not an
“electronic mail system” as NTP defines the term. However, as noted
above, the destination processor is within another email system when those
terms are read with their appropriate breadth. Accordingly, this argument is
unpersuasive of error for the reasons stated above.
On balance, upon weighing all of the evidence together as a whole,
including the evidence of nonobviousness which we discuss in another
section of this opinion, we conclude that NTP has not shown error in the
rejection of these claims.
3.The Rejection of Claims 69-76 under 35 U.S.C. § 103(a) as being
unpatentable over Verjinski, Garbee, and May
We affirm.

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Issue
Has NTP shown error in the Examiner’s rejection of claims 69-76 under 35
U.S.C. § 103(a) as obvious in view of the combination of Verjinski, Garbee,
and May?
Additional Findings of Fact

Claim 69 reads as follows:
69. (Original Patent Claim) A method in accordance with claim
55 wherein: the at least one RF receiver receives the other originated
information when the destination processor is turned off and transfers
the other originated information to the at least one destination
processor at a time subsequent to reception of the originated
information by the at least one receiver when the destination processor
is turned on.

The Examiner found that May teaches a portable RF receiver
accessory, citing May Figures 1 and 2. They are reproduced below.

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Specifically, the Examiner found that the RF receiver accessory
receives and stores information when the destination processor is turned off,
in order to conserve power in the portable destination processor. (Final
Rejection 41). The Examiner concluded it would have been obvious to one
of ordinary skill in the art at the time the invention was made to further
modify the RF receiver in Verjinski to receive messages when the portable
processor was turned off in order to conserve power. (Id.).
NTP does not challenge these findings. NTP asserts that May
“explicitly fails to provide an “interface” as defined above.” (Brief 83.). As
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we have concluded above, Verjinski and Garbee are relied upon for that
element, and it is found in their descriptions when the term is given the
correct interpretation. Accordingly, this argument is also unpersuasive of
error.
On balance, upon weighing all of the evidence together as a whole,
including the evidence of nonobviousness which we discuss in another
section of this opinion, we conclude that NTP has not shown error in the
rejection of these claims.
D. The Rejections Based on Perkins and Hortensius

1. The obviousness rejection of claims 1-5, 16-25, 46-50, 53-62, 67-68,
and 79 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Perkins, Hortensius, and Garbee.

NTP argues that Perkins and Hortensius have been antedated by its
submissions filed under 37 C.F.R. § 1.131. In Section G of this opinion, we
address and evaluate NTP’s submissions made under 37 C.F.R. § 1.131. It
suffices here to note only that NTP’s showings under 37 C.F.R. § 1.131 fall
short and are insufficient to remove Perkins and Hortensius as prior art.
The Examiner finally rejected claims 1-5, 16-25, 46-50, 53-62, 67-68,
and 79 under 35 U.S.C. § 103(a) as being unpatentable over the combination
of Perkins, Hortensius, and Garbee.
We affirm.
Issue
Did the Examiner err in rejecting claims 1-5, 16-25, 46-50, 53-62, 67-
68, and 79 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Perkins, Hortensius, and Garbee?
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Findings of Fact
Of all NTP claims rejected as unpatentable over Perkins, Hortensius,
and Garbee, the independent claims are claims 1, 46, and 55. For this
obviousness rejection, claim 1 is representative.
Claim 1 is reproduced below from the Claim appendix found in the
brief:
1. A system for transmitting originated information from one
of a plurality of originating processors in an electronic mail system to
at least one of a plurality of destination processors in an electronic
mail system comprising:
at least one gateway switch, the at least one gateway switch
storing originated information received from one of the plurality of
originating processors prior to transmission of the originated
information to the at least one of the plurality of the destination
processors;
a RF information transmission network for transmitting the
originated information to at least one, RF receiver which transfers the
originated information to the at least one of the plurality of
destination processors;
at least one interface switch, the at least one interface switch
being coupled to at least one gateway switch and to the RF
information transmission network and transmitting the originated
information received from the at least one gateway switch to the RF
information transmission
network; and
at least one additional processor with each additional processor
being coupled to at least one interface switch, one of the at least one
additional processor originating other originated information from
outside any electronic mail system for transmission to the at least one
of the plurality of destination processors by the RF information
transmission network and an address of the at least one of the plurality
of destination processors to receive the other originated information
transmitted by the RF information transmission network or an
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identification number of the at least one RF receiver receiving the
other originated information for transmission to the at least one of the
plurality of the destination processors and transferring the other
originated information to the at least one of the plurality of the
destination processors; and wherein
the interface switch receiving the other originated information
originating from the one additional processor and the address or
identification number adds RF network information used by the RF
information transmission network during transmission of the other
originated information to the at least one RF receiver receiving the
other originated information to the other originated information and
each electronic mail system in the system transmits other
information from one of its plurality of originating processors through
a wireline to at least one of its plurality of destination processors
without transmission using the RF information transmission network.

Perkins
Perkins describes a system for coupling wireless migrating users to a
network operating in accordance with TCP/IP type protocol. (Perkins 2:56-
59).
As seen in Fig. 2 reproduced below, a communications network 1
includes one or more LANs 2 and 3.
Each LAN includes a wireless network comprised of a plurality of
mobile communication units (MU) 10 in wireless communication with a
plurality of header stations (HS) 12. Each HS 12 is bi-directionally coupled
to a wired LAN 14. The HS 12 communicates with the MU 10 preferably
through infrared (IR) radiation wireless, although radio frequency (RF)
wireless may be employed. Each HS 12 has associated with it a
communications area or cell 11. (Perkins 3:56-68).
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Perkins figure 2 showing a communication network 1

The LANs 2 and 3 include at least one local gateway (GW) 16 for
coupling the MU 10, via HS 12 and the LAN 14 to a global gateway 18.
The global gateway 18 is coupled to remote network users (not “remove
users” as seen in the figure).
The Perkins network conforms to the TCP/IP type protocol, an
addressing scheme used for end-to-end data transmission in a network.
Transmission Control Protocol (TCP) is a transport protocol providing
connection-oriented, end-to-end reliable data transmission in packet-
switched computer local area networks (LANS) and internetworks. (Perkins
1:34-37).
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The Internet Protocol (IP) supports the interconnection of
communication LANs (Perkins 1:24-26). The IP transmits blocks of data,
called internet datagrams, from sources to destinations throughout the
internet. (Perkins 1:46-50).
The two protocols, TCP and IP (TCP/IP), are mandatory for use in all
DoD packet switching networks utilizing connectivity across network or
sub-network boundaries. As such, network elements, such as hosts, front-
ends, gateways, etc. within such networks must implement TCP/IP. (Perkins
1:38-45).
Perkins describes global gateway 18 as a processor having suitable
network adapters and archival facility for storing packets addressed to
particular ones of the mobile units 10 during a time when the mobile units
are not in contact with the wireless network. The global gateway 18 assigns,
maintains, and associates “pseudo-IP” addresses with particular ones of the
mobile units. (Perkins 4:29-38).
The global gateway “owns” all of the associated pseudo-IP addresses
and allocates and deallocates the pseudo-IP addresses as the mobile units
(MU) 10 enter and leave the LANs 2 and 3. (Perkins 5:3-6).
Perkins further describes that when a remote user initiates a
conversation with a mobile unit (MU) 10 the remote user typically consults a
nameserver configured to send requests for specified MU 10 names to a
specified MU 10 global gateway 18. A request for a MU 10 name fails
unless there exits an association registered between the MU 10 name and a
pseudo-IP address. An address (or special IP address) is returned by the
nameserver (to the remote user) if the requested name is associated to a
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permanently assigned address, a temporary pseudo-IP address, or a
previously known pseudo-IP address. (Perkins 7:22-36).
In operation, and with respect to the elements of claim 1, if the remote
user obtains the pseudo-IP address of a registered MU 10, 4 the remote user
is enabled to send messages, such as mail, to the MU 10 (e.g., destination
processor), even if the MU 10 is inactive. (Perkins 7:37-40). The remote
user has associated with it a remote computer (e.g., originating processor).
(Perkins 8:33-39). The remote user is not sending paper mail with messages
written in ink to mobile unit 10, but electronic mail. Consequently, the
reference to a mail message refers to an electronic mail message. It is
inherent that the electronic device the remote user employs to send the
electronic mail message has sufficient processing power to send electronic
mail messages according to the protocols described in Perkins. This
understanding is supported by Perkins 8:33-39, which refers to a “remote
computer.” If not, Perkins could not reasonably state, with respect to its
disclosed communication system and protocols, that the remote user is
enabled to send messages such as mail.
The mail would be sent from the remote computer, to the global
gateway 18 (e.g., gateway switch), to the local gateway 16 (e.g., interface
switch), to the HS 12 (RF information transmission network), and finally
received by the MU 10 (e.g., RF receiver and destination processor).

4 Some mobile units 10 will have assigned pseudo-IP addresses. The
condition “if a remote user obtains the pseudo-IP address of a registered
mobile unit” serves to identify mobile units 10 to whom a remote user can
send an electronic mail message.
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When the MU 10 is inactive, the message is stored by the global
gateway 18 until a time when the MU 10 is active and the message can be
delivered via an associated local gateway 16. (Perkins 8:25-28).
According to Perkins, an IP address consists of four bytes the first two
bytes of which encode or identify the associated LAN. (Perkins 4:39-43)
Thus, in a pseudo-network containing mobile units 10, the pseudo-IP
address of the mobile unit contains identification information, i.e., address,
of the corresponding LAN with which the mobile unit is associated. Each
LAN includes its own associated local gateway 16, which connects the LAN
to global gateway 18 that further connects to remote users. In that context,
the LAN identification code within the pseudo-IP address is also an address
of the local gateway 16 for mobile unit 10. Thus, the pseudo-IP address of a
mobile unit 10 not only identifies the RF Receiver that is mobile unit 10 but
is also the address of the local gateway 16 which serves as an interface for
transmission of electronic mail from a remote user to the mobile unit.

Hortensius
Hortensius describes a system for interfacing a wired communications
network to a wireless communication network.
Fig. 1 reproduced below shows a wired network 12 connected to a
wireless network 13 through a transceiver 16 which functions as an interface
between the wired network 12 and the wireless network 13. Coupled to the
wired network 12 are one or more nodes 14. Nodes 14 may include data
processors, network servers and/or any of a number of conventional devices.
(Hortensius 3:4-11).
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Hortensius describes sending data from a wired node 14 to another
wired node 14 or via the protocol processor 28 and transmitter 24, to one of
the wireless nodes 18. Likewise, data (packet 40) may be directed from one
of the wireless nodes 18, via the receiver 20 and transmitter 24, to another
wireless node 18 or via the receiver and protocol processor 28 to one of the
wired nodes 14. (Hortensius 4:13-20).
Thus, Hortensius describes transmitting data from an originating
processor (at node 14) to a destination processor (node 14) through the wired
network 12 (wireline) without transmission using the RF transmission
network 13.

Hortensius describes that the advantages of a wired and wireless
network in combination provides for a low complexity and low cost
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transceiver for transparently coupling nodes of a wireless network to a local
area wired network. (Hortensius 2:12-16).
Principles of law
In KSR, the Supreme Court rejected the rigid application of the “teaching
suggestion or motivation” (TSM) test, instead favoring the “expansive and
flexible approach” used by the Court. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 415 (2007). Based on its precedent, the Court reaffirmed the
principle that “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” (Id at 416). The Court's opinions in United States v. Adams, 383
U.S. 39 (1966), Anderson’s Black Rock Inc. v. Pavement Salvage Co., 396
U.S. 57 (1969) and Sakraida v. Ag. Pro, Inc., 425 U.S. 273 (1976) are
instructive when the question of whether an application claiming the
combination of elements of prior art is obvious. KSR at 1740.
In Adams, “[t]he Court recognized that when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” Id. at 1740 (citation omitted)
(The Court ultimately found unexpected results resulting from prior art
warnings to be dispositive of nonobviousness). In Anderson’s Black Rock,
the Court concluded that the claimed invention combining two pre-existing
elements (radiant-heat burner and paving machine) ‘did not create some sort
of new synergy’; each element functioned as expected. KSR at 1740. “The
two in combination did no more that they would in separate, sequential
operation”. Id. at 1740 (citations omitted).
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In Sakraida, “the Court derived from its precedents the conclusion that
when [the claimed invention] ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such and arrangement, the combination is
obvious.” Id. at 1740 (citations omitted).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. [A] court must
ask whether the improvement is more than the predictable use
of prior art elements according to their established functions.

Id. at 1740.
Analysis

NTP argues that Perkins relates to a field of technology different from
that disclosed and claimed in the NTP patents. (Brief 58). Specifically, it is
urged that Perkins relates only to managing addresses for local area
networks implemented by wireless infrared links. NTP also argues that
Perkins relates to a session linked connection instead of “push” email. (Id.).
As noted above, art is analogous if it is "reasonably pertinent to the
particular problem with which the inventor is involved," In re Paulsen, 30
F.3d 1475, 1481-1482 (Fed. Cir. 1994).
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The Examiner observes that the claims make no such distinction, and
that both Perkins and NTP relate to the field of making network connections
to transfer data. (Answer 137).
In this case, as noted above, we find that the applicant is faced with
the problem of transmitting information between processors. (‘611 abstract).
Perkins teaches the skilled artisan a network connection which gives
alternatives for efficiency. (Perkins, Abstract). We therefore agree with the
Examiner that Perkins is both in the same field of endeavor and reasonably
pertinent to the particular problem with which the inventor is involved.
Independent claims 1, 46, and 55, and dependent claims 23 and 58

NTP has not provided separate argument for these claims, claim 1 is
designated as representative and the remaining claims stand or fall with
claim 1.
NTP argues that Perkins does not describe an “electronic mail system”
as that term is understood by one of ordinary skill in the art. (Brief 59 et
seq). NTP argues that because Perkins states “if” a remote user obtains the
pseudo-IP address of a registered mobile unit 10, the remote use is enabled
to send messages, such as mail, to the mobile unit 10” (Brief 59, citing
Perkins 7:37-44).
The argument is unpersuasive. As we have explained in the findings
above, Perkins discloses that a remote user sends an electronic mail message
through the disclosed communication system to a mobile unit 10. On that
basis, it is inherent that the remote user makes use of a device with sufficient
processing power to compose and send an electronic mail message. That
device constitutes an originating processor, and the remote user’s electronic
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mail message originates from that processor. The processor itself constitutes
an electronic mail system because it enables the remote user to compose and
send an electronic mail message.
While it is true that the composing and sending of electronic mail is
premised on whether the remote user obtains the pseudo-IP address of a
registered mobile unit 10, we have explained in our findings above that it is
implicit in Perkins that some mobile units would be so registered. The
premise merely limits the sending of electronic mail to those whose address
is known. It is not a “may be” or imaginary electronic mail situation as NTP
evidently asserts.
NTP additionally argues that Perkins does not disclose any processors,
electronic mail server computers, or electronic mail programming that is/are
configured to permit communication by way of electronic mail messages
among recognized users of electronic mail system. (Brief 60-61). As
explained in our claim interpretation Section A above, an electronic mail
system does not require all of these elements.
A processor placing an electronic mail message on a transmission
mechanism capable of delivering the message to the intended recipient
constitutes an electronic mail system, one that sends electronic mail. A
processor capable of receiving from a transmission mechanism an electronic
mail message intended for it constitutes an electronic mail system, one that
receives electronic mail. A transmission mechanism capable of routing an
electronic mail message toward the intended recipient constitutes an
electronic mail system, one that transmits or routes electronic mail. Any
multiple or combination of the above also constitutes an electronic mail
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system. The term is broad and reads on any aspect of the processing or
handling of electronic mail. The interpretation is not inconsistent or
incompatible with any example illustrated in NTP’s specification. Any
system which performs some function with regard to electronic mail is
reasonably deemed an electronic mail system.
Perkins describes sending electronic mail from a remote user from
their computer (Perkins 8:33-39), e.g., a device capable of sending electronic
mail, to a mobile unit, e.g., a device capable of receiving electronic mail,
through global gateway 18 and LAN (local area network) 2 or 3, e.g., a
transmission mechanism. Specifically, Perkins describes that “[i]f a remote
user obtains the pseudo-IP address of a registered mobile unit 10, the remote
user is enabled to send messages, such as mail, to the mobile unit 10, even if
the mobile unit is inactive.” (Perkins 7:37-40). As seen in Perkins Fig. 2,
reproduced in the findings of fact section, communication between the
remote users (shown erroneously as “remove users”, see, i.e., 4:25-27) and
the MUs or mobile units 10 is made through global gateway 18 and LAN
(local area network) 2 or 3. The transmission of data is electronic and thus
the “mail” referenced in Perkins at column 7, lines 37-40 is “electronic
mail.” For these reasons, NTP has not shown error in the Examiner’s
finding that Perkins describes an electronic mail system.
We do not credit the testimony of Dr. V. Thomas Rhyne, NTP’s
technical witness, insofar as it relates to the issue of whether Perkins
discloses an electronic mail system, because Mr. Rhyne’s interpretation of
“electronic mail system” is unduly narrow. For instance, according to Dr.
Rhyne, “one of skill in the art would not understand any of the components
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disclosed by Perkins to have any relationship or association with electronic
mail systems.” (Appendix A8, ¶ 35). Dr. Rhyne defines “electronic mail
system” as follows:
The phrase “electronic mail system,” as used in the Campana
patents, refers to a type of communication system which
includes a plurality of processors running electronic mail
programming,. The processors and the electronic mail
programming are configured to permit communication by way
of electronic mail messages among recognized users of the
electronic mail system. The various constituent processors in
the electronic mail system typically function as both
“originating processors” and “destination processors.”
(Appendix A8, ¶ 5)

That is not the broadest reasonable interpretation of “electronic mail system”
as we have determined in Section A of this opinion. The broadest
reasonable interpretation of electronic mail system reads on a device which
enables the user to compose and send electronic mail. Viewed in that light,
all of the disclosed components of Perkins are related to an electronic mail
system, contrary to NTP’s contention at page 60 of the Brief and the
testimony of Dr. Rhyne. (Appendix A8, ¶¶ 5 et seq., ¶ 30 et seq.).
NTP argues that none of the components disclosed by Perkins, i.e., the
remote users and mobile units, are described as having any relationship or
being a part of an electronic mail system, despite the fact that Perkins’
system may be used to transmit mail. (Brief 60). NTP’s arguments are not
persuasive. It is not necessary for Perkins to use the specific words
“electronic mail system” or to describe any of the components as part of an
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“electronic mail system” in order for the reference to teach an “electronic
mail system” having originating and destination processors, for example.
NTP argues that Perkins does not describe an “originating processor”
or a “destination processor” as those terms are understood by one of
ordinary skill in the art. (Brief 61). NTP argues that none of the remote
users or mobile units qualifies as an originating or destination processor,
since they are not described as being part of an electronic mail system or
being able to process electronic mail programming. We also do not credit
the testimony of Dr. Rhyne (Appendix A8, ¶ 37) because it is based on an
excessively narrow interpretation of the claim terms “originating processor”
and destination processor” which reads into the claims extraneous features
from the specification.
As stated in the claim interpretation section A above, any device that
is capable of sending originated information or electronic mail is an
originating processor. Any device that is capable of receiving originated
information or electronic mail is a destination processor. NTP has not
shown error with the Examiner’s findings that the remote user (remote
computer) and mobile units 10 are originating and destination processors
respectively.
Next, NTP argues that Perkins does not describe an “RF information
transmission network.” (Brief 61). The argument is unpersuasive. Perkins
discloses an “RF information transmission network” because as we have
explained in the findings above, Perkins discloses header stations 12 which
make radio frequency transmissions of information received through local
gateway 16 to mobile units 10 and receive radio frequency transmissions
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from mobile units 10. We also do not credit the testimony of Dr. Rhyne
(Appendix A8, ¶ 39-42) because it is based on an excessively narrow
interpretation of the claim term “RF information transmission network”
which reads into the claims extraneous features from the specification.
As we have already determined in Section A of this opinion on claim
interpretation, it is not necessary that a RF information transmission network
must have the same kind of geographic dispersion and substantial coverage
as that provided by the types of RF systems specifically disclosed in the
specification of NTP’s involved patent.
NTP argues that neither Perkins’ local gateway nor global gateway are
“a gateway switch” or an “interface switch” since neither are described as
being part of an electronic mail system. (Brief 63). The argument is not
persuasive. As explained in the findings above, the global gateway 18
constitutes the gateway switch and the local gateway 16 in Perkins
constitutes an interface switch. NTP is simply incorrect that the global
gateway 18 only connects remote users to LANs and that the local gateway
16 only connects mobile users to LANs. We do not credit the testimony of
Dr. Rhyne in that regard (Appendix A8, ¶ 43) because it is based on the
incorrect notion that Perkins does not disclose originated information, i.e.,
an electronic mail message, or an “electronic mail system.” We also do not
credit the testimony of Dr. Rhyne because it is based on an excessively
narrow interpretation of the claim terms “gateway switch” and “interface
switch” which reads into the claims extraneous features from the
specification.
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As we have explained in Section A of this opinion on claim
interpretation, the claim term “gateway switch” does not require a processor
in an electronic mail system which connects processors in that system and
which has additional functions for supporting other aspects of an electronic
mail system such as receiving, storing, routing and/or forwarding electronic
mail messages. An interface which provides controlled entry of information
into a separate system, device, or component reasonably constitutes a
gateway switch. An “interface switch”, when broadly construed within
reason, is a structural connection or device between two or more systems,
devices, or component parts through which information may pass from one
side to the other.
NTP next argues that Perkins does not teach or suggest (1) an
interface switch, (2) a gateway switch and (3) transmitting the originated
information from the at least one gateway switch to the RF information
transmission network. (Brief 63-64). NTP’s arguments are misplaced, as
they again rely upon the mistaken interpretations of the claim limitations
provided by Dr. Rhyne. For example, NTP argues that “Perkins does not
teach or suggest transmission of electronic mail messages for delivery to
mobile processors which can be carried by a person outside of a home or
office and which execute electronic mail programming.” (Brief 64). As
discussed above, there is no requirement that a the claimed destination
processors or RF receivers be carried outside the home. We do not credit the
testimony of Dr. Rhyne, Appendix A8, ¶ 45.

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Claims 46 and 55
NTP argues that “[m]any of the limitations in Claims 46 and 55 are
also included in claim 1” (Brief 64). NTP then lists those limitations.
However, merely listing the elements of a claim does not constitute separate
arguments for patentability of those claims. Moreover, we have already
determined that NTP is reading those limitations unduly narrowly.
Accordingly, this lack of argument is unpersuasive, for the reasons noted
above with respect to the claim terms interpretation in Section A above.
Hortensius
NTP argues that Hortensius does not cure the deficiencies of Perkins,
relating to NTP’s interpretation of “interface switch” “originated
information” or “originating processors.” (Brief 65).
The Examiner did not rely on Hortensius to teach an originating
processor in an electronic mail system, a destination processor in an
electronic mail system, or an RF information transmission network. Rather,
the Examiner relied on Hortensius for the teaching of transmitting data from
one processor to another over wirelines without using the optional wireless
data path.
The Examiner further found that Perkins recognizes Hortensius as a
suitable embodiment for the header stations 12 and the mobile units 10
(Perkins 4:5-10) and that utilizing wired and wireless terminals together in
one system as taught by Hortensius would have led to a low complexity and
cost transceiver for coupling nodes of a wireless network to a local wired
network. (Final Rejection 46).
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We do not credit the testimony of Dr. Rhyne (Appendix A8, ¶¶ 37-
39), because his interpretation of “originated information” “interface,” and
“originating processor” is unjustifiably narrow and misconstrues the
Examiner’s findings with respect to Hortensius.
We now turn to Garbee.
NTP makes the same arguments for Garbee as made with regard to
Hortensius, namely that Garbee does not cure the deficiencies of Perkins
relating to “one additional processor”, “one destination processor”, or
transmitting “other originated information” to a “destination processor”
through an “RF information transmission network” based principally on the
testimony of Dr. Rhyne ¶¶ 50-52. As noted above in Section A, we do not
credit the testimony of Dr. Rhyne as he has misinterpreted the claim
elements and unduly narrowly construed them. Accordingly, this discussion
is unpersuasive of error.
ii. Claims 4, 49 and 61-62 .
Claim 4 recites (Brief Claims Appendix):
4. A system in accordance with claim 1 wherein:
the identification number of the at least one RF receiver
receiving the other originated information is added to the other
originated information originated by the additional processor by
the interface switch receiving the other originated information
and the address or the identification number from the one
additional processor.
The Examiner found that the interface which is the last
gateway in the route to a destination must map the IP address to the
physical network location of the destination. The Examiner further
found that the PHAC using TCP/IP would be required to add RF
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network information corresponding to the physical address of the
receiver in the network, citing RFC 791 IP, Section 2.3, pages 5-7 as
evidence thereof. (Final Rejection 47).
NTP argues that because of this, Perkins does not teach every
feature of TCP/IP. (Brief 67). NTP also alleges that Perkins does not
teach either the addition of the interface switch address or destination
processor address because it has neither an interface nor a destination
processor. (Id.).
Neither argument has merit. First, the question to be answered
is not whether Perkins teaches or suggests every detail of TCP/IP;
rather, whether the claimed subject matter would have been obvious
to one of ordinary skill in the art at the time the invention was made.
The Examiner found TCP/IP to be a known protocol, and
addressing the RF receiver identification would have been an obvious
expedient to one of ordinary skill in the art to route a message
directly. NTP has supplied insufficient evidentiary basis to doubt the
Examiner’s findings or conclusion of obviousness based thereon.
Secondly, we have noted above that NTP’s definition of interface and
destination processor is unduly narrow. Accordingly, we are unknot
persuaded by these arguments.
On balance, upon weighing all of the evidence together as a
whole, including the evidence of nonobviousness which we discuss in
another section of this opinion, we conclude that NTP has not shown
error in the rejection of these claims.

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2. The obviousness rejection of claims 69-76 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Perkins, Hortensius,
Garbee, and May.

We affirm.
Issue
Did the Examiner err in rejecting claims 69-76 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Perkins,
Hortensius, Garbee, and May?
Findings of Fact
Claim 69 reads as follows:
69. (Original Patent Claim) A method in accordance with
claim 55 wherein:
the at least one RF receiver receives the other originated
information when the destination processor is turned off and transfers
the other originated information to the at least one destination
processor at a time subsequent to reception of the originated
information by the at least one receiver when the destination processor
is turned on.

The Examiner found that May teaches a portable RF receiver
accessory for use with a portable computing device. (May, Figs. 1
and 2). The RF receiver receives and stores information transmitted
to the RF receiver when the destination processor is turned off. (Final
Rejection 49). The Examiner concluded that it would have been
obvious to one of ordinary skill in the art at the time the invention was
made to modify the Perkins and Hortensius system to receive
messages when the processor was turned off to conserve power. (Id).

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Analysis
NTP makes the same arguments regarding this rejection
relating to the definition of the claim terms. (Brief 68). As we have
found that argument unconvincing, we need not repeat our reasoning.
NTP makes additional argument regarding this rejection. Given
that the argument is confusing, it is reproduced in full below:
Further, Patent Owner respectfully submits that there is no
teaching or suggestion in either Perkins, Hortensius, Garbee
May, or the knowledge of one of ordinary skill in the art to
combine the Telenor and May [sic – references?] as proposed in
the office action. May specifically relates to [sic] Moreover,
Patent Owner respectfully submits that even if combined,
Perkings, Hortensius, Garbee and may would still not achieve
the claimsed invention. For example, Patent Owner
respectfully submits that [the] referenced sections of May state
that [the] paging accessory has a battery and would operation
[sic- operate] when “disconnected”, but fails to teach or suggest
the specific claimed feature of receiving other originated
information when the destination processor is turned off and
transferring the other originated information when the
destination processor is turned on, as recited in claims 69 and
73, for example. (Brief 68).

First, we observe that in KSR, the Supreme Court rejected the
rigid application of the “teaching suggestion or motivation” (TSM)
test, instead favoring the “expansive and flexible approach” used by
the Court. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007).
Based on its precedent, the Court reaffirmed the principle that “[t]he
combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable
results.” Id.
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Second, we are not informed what NTP’s argument is regarding
the May reference.
Finally, to the extent that NTP is arguing that May fails to
render obvious reception of information when the processor is off, and
transferring the information to the processor when it is turned on, we
refer to May, 1:50-2:13. May specifically describes reception while
the processor is off, then alerting the user so the processor may be
turned on and the message received in the page signal read by the
computing device.
On balance, upon weighing all of the evidence together as a
whole, including the evidence of nonobviousness which we discuss in
another section of this opinion, we conclude that NTP has not shown
error in the rejection of these claims.
3. The obviousness rejection of claim 80 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Perkins,
Hortensius, Garbee, and the prior art in NTP ‘611.

We affirm.
Issue
Did the Examiner err in rejecting claim 80 under 35 U.S.C. §
103(a) as being unpatentable over the combination of Perkins,
Hortensius, Garbee, and the prior art in NTP ‘611?
Findings of Fact
Claim 80 reads as follows:
80. (Original Patent Claim) A method in accordance with
claim 79 wherein:
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the transmission of the originated information through a
telephone network is through either a public or private switch
telephone network.

The Examiner found that NTP admitted that the prior art
network shown in NTP ‘611 Figure 1 shows that access to message
transmission networks was well known to be provided to users of
public or private telephone switched networks. (Final Rejection 50).
The Examiner concluded that it would have been obvious to
one of ordinary skill in the art at the time the invention was made to
enable users of the Perkins message gateway system as modified by
Hortensius to access the system by public or private switched
telephone networks. (Id).
Analysis
NTP “traverses” the rejection (Brief 68), which is procedurally
inaccurate at this stage in the appeal. NTP is obligated to show error
in the Examiner’s findings or conclusion of obviousness, or to
otherwise show that the rejection has been overcome by sufficient
evidence, e.g. secondary considerations. NTP reiterates its previous
argument that the art fails to teach an “interface switch”, again relying
on the declaration of Dr. Rhyne, paragraph 55. (Brief 68-69).
As noted above, we do not credit Dr. Rhyne’s testimony that
the scope of the claim term “interface switch” is narrowly construed.
Consequently, we are unpersuaded of error.
On balance, upon weighing all of the evidence together as a
whole, including the evidence of nonobviousness which we discuss in
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another section of this opinion, we conclude that NTP has not shown
error in the rejection of these claims.
E. Secondary Considerations /
Objective Evidence of Nonobviousness

Introduction
Obviousness factual inquiries include secondary considerations based
on evaluation and crediting of objective evidence of nonobviousness.
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Notwithstanding what
the teachings of the prior art would have suggested to one with ordinary skill
in the art at the time of NTP’s invention, the totality of the evidence
submitted, including objective evidence of nonobviousness, may lead to a
conclusion that the claimed invention would not have been obvious to one
with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471-1472
(Fed. Cir. 1984).
Secondary consideration factors include (1) unexpected results,
(2) commercial success, (3) satisfaction of long-felt need, (4) failure of
others, and (5) copying by others. E.g., Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 291 (Fed. Cir. 1985); Perkin-Elmer Corp.
v. Computervision Corp., 732 F.2d 888, 894 (Fed. Cir. 1984), cert. denied,
469 U.S. 857 (1994). NTP has alleged (1) commercial success, (2) industry
recognition, (3) satisfaction of long-felt but unresolved need, (4) failure of
another to design around its invention, (5) licensing of the invention to
others and (6) copying of its invention by another.
To be of relevance, evidence of nonobviousness must be
commensurate in scope with the claimed invention. In re Kulling, 897 F.2d
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1147, 1149 (Fed. Cir. 1990); In re Grasselli, 713 F.2d 731, 743 (Fed. Cir.
1983); In re Tiffin, 448 F.2d 791, 792 (CCPA 1971) (evidence of success for
cups is not commensurate in scope with containers). During prosecution
before the USPTO, that a species or subgenus of a claimed invention might
have been nonobvious does not equate to nonobviousness of a broader
generically claimed invention. See In re Muchmore, 433 F.2d 824, 826
(CCPA 1970).
In patent law, “the name of the game is the claim.” In re Hiniker,
150 F.3d 1362, 1369 (Fed. Cir. 1998). The Hiniker court stated, id.:
Hiniker’s proffered facts, including its evidence of secondary
considerations of nonobviousness, are not commensurate with
the claim scope and are therefore unpersuasive. The invention
disclosed in Hiniker’s written description may be outstanding in
its field, but the name of the game is the claim. [Citation
omitted.]

There must be a demonstrated “nexus” between the merits of the
claimed invention and the evidence of secondary considerations before that
evidence is accorded substantial weight in an obviousness determination.
Simmons Fastener Corp. v. Illinois Tool Works, Inc., 739 F.2d 1573, 1575
(Fed. Cir. 1984), cert. denied, 471 U.S. 1065 (1985); Stratoflex, Inc. v.
Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983); see also In re
Huang, 100 F.3d 135, 140 (Fed. Cir. 1996); In re Fielder, 471 F.2d 640, 646
(CCPA 1973). “Nexus” is a legally and factually sufficient connection
between the objective evidence and the claimed invention, such that the
objective evidence should be considered in determining nonobviousness.
Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392
(Fed. Cir. 1988). In the absence of an established nexus with the claimed
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invention, secondary consideration factors such as commercial success,
satisfaction of a long-felt but unresolved need, licensing and copying by
others are not entitled to much, if any, weight and generally have no bearing
on the legal issue of obviousness. See In re Vamco Mach. & Tool, Inc., 752
F.2d 1564, 1577 (Fed. Cir. 1985).
During prosecution before the USPTO, the applicant for patent bears
the burden of demonstrating nexus between the objective evidence of
nonobviousness and the claimed invention. In re Paulsen, 30 F.3d 1475,
1482 (Fed. Cir. 1994); In re Huang, 100 F.3d at 140.
NTP bears the burden of proof. At this point we wish to observe that
the burden of proof on rebuttal evidence to commercial success and other so-
called secondary considerations in an infringement context is different from
that in an ex parte context. As Demaco reveals, the burden of proof on
"nexus" in an infringement context is on the patentee. Demaco Corp., 851
F.2d at 1392. Demaco goes on to say that a prima facie case of nexus is
generally made out when the patentee shows both that there is a commercial
success and that the thing that is commercially successful is the invention
disclosed and claimed in the patent. Id.
The phrase “disclosed and claimed" can be read as meaning an
embodiment "disclosed" in the specification and "covered" by the claim (i.e.,
within the scope of the claim) of the patent. When the patentee has
presented a prima facie case of nexus, the burden of coming forward with
evidence in rebuttal shifts to the challenger. Id. at 1393.
The Federal Circuit's rebuttal holding makes sense in an infringement
context due to the liberal discovery provisions available under the Federal
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Rules of Civil Procedure. In an ex parte context, however, a different
practice is more appropriate. First, an examiner is not a party—rather an
examiner is a quasi-judicial official acting on the record presented by the
applicant, or in this case, the reexamination patentee. As an objective
decision maker, an examiner has no axe to grind. An accused infringer has
an axe to grind. Second, upon evaluation of any showing made, the USPTO
points out short-comings in the evidence which the applicant or patent owner
can then address. The discovery available under the Federal Rules of Civil
Procedure is not a "tool" commonly used by examiners.
Accordingly, the "rebuttal" practice of Demaco does not fit well into
the patent application or patent reexamination process. The same is true in
third-party reexaminations, because a third-party requester has only limited
opportunity to submit evidence and cannot "go after" evidence using Federal
Rules of Civil Procedure discovery techniques during proceedings in the
USPTO. The USPTO can make observations on the evidence and it is up to
the applicant or patentee, as the case may be, to provide evidence and
answers to those observations.
In an attempt to satisfy its burden, NTP has submitted (1) a
declaration of its President, William C. White, (2) a supplemental
declaration of its President, William C. White, and (3) portions of the trial
transcript, from the patent infringement suit filed by NTP against RIM, of
the testimony of (a) NTP’s witness Terry Lee Musika and (b) RIM’s witness
Murali Narayanan.
For reasons discussed below, NTP’s evidence of nonobviousness
factually is not commensurate in scope with the invention claimed by NTP.
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NTP also has failed to establish the required nexus between the claimed
invention and the proffered evidence of nonobviousness. Contrary to NTP’s
contention, there is convincing affirmative evidence that features in addition
to those required by NTP’s claims lie at the foundation of the secondary
consideration factors alleged by NTP.
Discussion
1. Alleged Industry Recognition and
Satisfaction of Long-Felt but Unresolved Need
According to the specification of the NTP ‘611 patent, what makes
NTP’s disclosed invention useful and advantageous over the prior art are the
following characteristics of the RF receiver used by NTP in its invention to
receive wireless email messages intended for a destination processor (NTP
‘611 patent 18:33-51):
(1) the RF receiver is detachable from the destination processor and
operates to wirelessly receive the email messages while it is detached from
the destination processor;
(2) the RF receiver includes its own memory to store the received
email messages intended for the destination processor and does not require
power from the destination processor to receive and store those messages;
and
(3) the RF receiver provides reception and review of email messages
without need of the destination processor for which the email messages are
intended.
In column 20, lines 20-23, the NTP ‘611 patent describes:
The RF receiver may be detached from the destination
processor during reception of the information with a memory
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of the RF receiver storing the information. (Emphasis
added).

The NTP ’611 patent further describes in column 23, lines 20-33
(emphasis added):
An important aspect of the present invention is that
reception and review of electronic mail can be performed
without connection of the RF receiver 119 to the destination
processor A-N which permits the receiver to function as a
mobile electronic mail receiver. As a result, the user may
move from the site of the destination processor A-N either
within an office or other location or during travel while
receiving electronic mail which was not possible with the
prior art. Furthermore, the connection of the RF receiver 119
to the destination processor automatically transfers the
electronic mail stored within the memory of the RF receiver to
the destination processor without manual keyboarding.

We have not been able to find a clear description in the specification
of the NTP ’611 patent of any embodiment that does not have a detachable
RF receiver with its own memory to enable it to receive and store email
messages in the absence of the destination processor for which the email
messages are intended. Likewise, we have not been able to find any portion
of the NTP ‘611 patent specification that clearly identifies an RF receiver
that is (1) inseparable from the destination processor, (2) includes no
memory unit, or (3) depends on an attached destination processor to receive
and store email.
As is described in NTP’s specification, the alleged advantage NTP’s
invention provides over the prior art requires an RF receiver which (1) is
detachable from the destination processor to which email messages are
intended, and (2) includes its own memory for storing email messages
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received by the RF receiver in the absence of the destination processor. The
stored messages are later transferred to the destination processor when the
RF receiver is attached to the destination processor. Even without the
destination processor connected thereto and turned on, the RF receiver can
receive wirelessly transmitted email messages, and store them until the RF
receiver is connected to a destination processor. No email message would
be missed by the RF receiver even if the destination processor is turned off
or not carried with the user.
Statements appearing in NTP’s Appeal Brief indicate something
similar. NTP’s Appeal Brief on page 84 states:
The transmission to the RF receiver was advantageous because
it eliminated the requirement that a destination processor
be [1] turned on and [2] carried with the user and [3]
connected to a telephone jack in order for the user to receive
email messages. (Emphasis and bracketed numbers added)

NTP’s specification does not indicate, and NTP does not assert, that
simply providing for receipt by an RF receiver of wirelessly transmitted
email messages intended for a destination processor represents why its
invention is advantageous with respect to the prior art. Rather, the focus is
on a “detachable” RF receiver which (1) has its own “memory” and (2)
receives email messages even in the absence of the destination processor.
Similarly, the declaration testimony of NTP’s President William C.
White under 37 C.F.R. § 1.132 demonstrates that the alleged industry
recognition is directed to a system using a detachable RF receiver with its
own memory, which receives email even when the destination processor is
not turned on, not carried with the user, or not connected. In describing the
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industry recognition for NTP’s invention, William C. White states in his
declaration dated June 17, 2005 (Appendix A7, ¶ 16):
16. The inventions claimed in the NTP patents relate to
the integration of electronic mail systems with RF wireless
communications networks. See, e.g., ‘611 Patent, Col. 18, l. 32
to Col. 22 l. 17. In simplified terms, a message originating in
an electronic mail system may be transmitted not only by
wireline but also via radio frequency (RF), in which case, it is
received by and stored on a user’s mobile RF receiver. The
transmission to the RF receiver was advantageous because it
eliminated the requirement that a destination processor be
turned on and carried with the user and connected to a
telephone jack in order for the user to receive email messages.
See, e.g., ‘611 Patent, Col. 18, ll. 40-47. Almost immediately,
the industry recognized the significance of the inventions.
(Emphasis added.)

The above-quoted testimony of NTP’s President indicates that the
purported industry recognition of NTP’s invention comes from its ability to
have wireless email received by an RF receiver which has its own memory
to store the email and which receives email even when the destination
processor is not turned on or is not carried with the user. The testimony is
consistent with the advantages of the invention as stated in NTP’s
specification. The RF receiver receives and stores email without the
destination processor.
However, none of NTP’s independent claims argued on appeal
requires an RF receiver which receives email while it is detached from the
destination processor, which includes its own “memory,” and which operates
to receive email messages in the absence of the destination processor.
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The testimony of William C. White continues in paragraphs 17 and 18
of the same declaration, which are reproduced below:
17. Indeed, when the inventors demonstrated the
claimed inventions to AT&T in September 1990, AT&T
requested that the technology be adapted for demonstration at
the upcoming Comdex Show in November 1990. See
Declaration of Thomas J. Campana, Jr. Pursuant to 37 C.F.R. §
1.131 at ¶s 24-31.

18. After witnessing the demonstration of the
invention, AT&T also requested that the technology be
implemented with its new Safari laptop computer. Id.

While the testimony refers to the claimed invention, no description is
given as to the specific embodiment that is said to have been demonstrated
to AT&T. NTP represents that the demonstration shown AT&T was a
reduction to practice of the invention of the independent claims. Assuming
NTP is correct, the fact remains that both an embodiment using a detachable
RF receiver with its own memory and an embodiment using a non-
detachable RF receiver without its own memory fall within the broad scope
of NTP’s claims.
Since it is possible that it could have been the disclosed embodiment
using a detachable RF receiver having its own memory that was
demonstrated, and that such an RF receiver is not required by the claims,
NTP has not shown by a preponderance of the evidence the relevance of
AT&T’s supposed response as objective evidence of nonobviousness of the
claimed invention.
Furthermore, we decline to credit the testimony in paragraphs 17 and
18 reproduced above for other independent reasons. NTP presented and
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explained no testimony of any AT&T personnel who supposedly witnessed
the demonstration. We therefore have no direct testimony which indicates
any AT&T personnel impression of the demonstrated invention and the
reasons for such impression. Requesting that the demonstration be repeated
again at an upcoming computer industry trade show for computers and
requesting that the invention be demonstrated with a different destination
processor are less than direct indications of a positive recognition and even
less indication of the extent of the recognition. It is only widespread
recognition in the art that constitutes objective evidence of nonobviousness,
not just positive recognition from a few. See, e.g., Kloster Speedsteel AB v.
Crucible Inc., 793 F.2d 1565, 1574 (Fed. Cir. 1986). Also, such a response
does not indicate the existence of a “long-felt and unresolved” need in the
industry for the demonstrated invention.
NTP’s Brief (Brief 85) refers to the trial testimony in the infringement
litigation between NTP and RIM of inventor Thomas J. Campana, Jr. The
trial testimony is said to support NTP's assertion of industry recognition and
satisfaction of a long-felt but unresolved need. The cited testimony concerns
a demonstration of the invention at a 1990 Comdex Trade Show for
computers in conjunction with AT&T’s Safari laptop computer, and appear
on pages 149-152, and 177-180 of the trial transcript. We have reviewed the
cited testimony of Thomas J. Campana, Jr. and do not credit it with any
substantial weight.
Campana’s testimony describes how AT&T’s customers at the trade
show reacted to a demonstration of NTP’s invention implemented on an
AT&T computer. Campana states that the reaction ranked from disbelief to
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a request to hold the RF receiver in the customer’s own hand and see if an
email message sent anew would actually be received. (Trial Transcript 151
and 178-180). Campana also states that the customers even suggested using
the RF receiver with an office computer rather than just a portable laptop
computer as was used at the trade show. (Trial Transcript 151). Campana
states that at the trade show AT&T had shown the invention to several
hundred customers including Sears, Xerox Corporation, and United Parcel
Service. (Trial Transcript 178).
We have not heard from Sears, Xerox or UPS. Campana cites to a
letter or report that he is said to have written which is said to indicate that
customer response to the NTP invention was “overwhelming.” (Trial
Transcript 178-179). It is uncertain whether a copy of that letter or report
has been submitted by NTP. NTP did not inform us where a copy can be
located in the record of this appeal or whether it even exists in the record of
this appeal. Campana notes in particular that an Executive from Xerox
Corporation is said to have been in disbelief about the invention and
specifically asked to have the RF receiver detached from the computer so
that he could see if the receiver would actually receive the wireless email
and then transfer it to the computer when the RF receiver and the laptop
computer are connected.
Campana’s testimony is not corroborated by the testimony of any one
of the hundreds of AT&T customers who are said to have been shown the
invention at the trade show. Campana’s testimony is not corroborated by the
testimony of any AT&T personnel who are said to have conducted the
demonstration at the trade show. Campana’s testimony is not corroborated
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by any press or media report about the trade show. Campana’s testimony is
not corroborated by the testimony of any person who might have been in
attendance at the demonstration and witnessed the response of the AT&T
customers.
It is also not entirely clear from the portions of the Trial Transcript
cited by NTP that Campana himself was in attendance at the demonstration
to witness any responses first hand. In any event, assuming that he was
present, and that he witnessed the demonstration to the hundreds of people
who are said to have visited AT&T’s setup at the trade show at various
different times, there is still essentially only the testimony of an inventor and
his own report on how overwhelmingly positive the reaction supposedly was
from people who were shown a demonstration of his invention.
Paragraph 19 of the declaration of NTP’s President William C. White
refers to the trial testimony of one witness identified as “RIM’s own
witness” as confirming the allegedly “overwhelmingly positive reaction by
industry customers” at the 1990 Comdex Trade Show. We have read the
cited pages of the trial transcript, i.e., pages 1264-1265, and note that they
do not indicate (1) the name or identity of the witness, (2) the employer of
the witness, (3) the role of the witness at the 1990 Comdex Trade Show, or
(4) the extent to which he or she actually witnessed a demonstration to
hundreds of customers who are said to have visited AT&T’s setup at the
show at various times.
The cited testimony of “RIM’s own witness” does not support NTP’s
assertion. Notably, the witness did not agree to characterize NTP’s
invention a “big breakthrough,” and also declined to go along with the
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questioner’s suggestion that Sears, United Parcel Service, and Xerox
Corporation were ecstatic about what they saw. Pertinent portions of the
testimony are reproduced below (Exhibit 1036):
Q And these customers, Sears, United Parcel Service, and
Xerox were, to put it mildly, ecstatic about what they saw,
weren’t they?

A They liked the capabilities of sending wireless messages
to laptop computers.

Q No doubt about it. This was a big breakthrough.

A. I don’t know whether I would call it a big breakthrough,
but that’s a capability that they liked. It was impressive when
you see it for the first time that wireless messaging to your
laptop computer was useful.

That one witness characterized a demonstration of NTP’s invention at
the 1990 Comdex Trade Show as something three customers out of hundreds
who saw the demonstration “liked” does not establish widespread industry
recognition and does not support NTP’s assertion that there was a significant
long-felt but unresolved need in the industry for NTP’s invention or that
there was an “overwhelming positive reaction by industry customers.”
Neither does the observation that the invention was useful.
On page 90 of NTP’s brief, NTP identifies the witness referred to in
William C. White’s declaration as “RIM’s own witness” as Murali
Narayanan, but does not (1) state his employer, (2) explain his role at the
1990 Comdex Trade Show or (3) the extent to which he witnessed the
demonstration to the hundreds of AT&T customers. On page 90 of NTP’s
appeal brief, NTP cites pages 1265-1266 of the trial transcript containing the
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trial testimony of Murali Narayanan as supporting the assertion that
“customers expressed disbelief that such a product could work.” We find no
such testimony in the cited portions of the trial transcript. Rather, we see
that the witness rebuffed the questioner’s suggestion that the customers were
expressing incredible disbelief at what they were seeing. Pertinent portions
of the testimony are reproduced below:
Q And it is true, because you were there for at least part of
that meeting, it is true that some of your customers were
expressing incredible disbelief at what they were seeing.

A They liked what they saw.

Q No doubt about it.

A No doubt.

Given the interest Campana had in his own invention, we decline to
credit the evidence stemming solely from the co-inventor himself,
particularly in the absence of corroborating evidence from (1) the customers
who were shown the invention, (2) AT&T personnel who conducted the
demonstration, and (3) press and media who might have reported on the
1990 Comdex Trade Show. Moreover, Campana had specific recollection
only of the reaction from one customer out of hundreds, the one said to be
representing Xerox Corporation. As to the rest, he has no specific
recollection and the testimony is too vague and general to be of value. It is
uncertain what portion of the hundreds shared a similar reaction and what
portion did not.
It is significant that although hundreds of customers allegedly saw the
demonstration at the 1990 Comdex Trade Show, NTP filed no testimony
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from a single customer about the customer's impression or evaluation of
NTP’s invention. Furthermore, without direct testimony from customers,
even assuming that the customers were impressed, we do not know the
reasons why they were impressed and how impressed they were. Also,
being impressed about an invention does not establish, as NTP suggests, that
there was a long-felt but unresolved need solved by the invention.
The testimony of Murali Narayanan, who NTP simply calls RIM’s
witness in the infringement trial, does not help NTP. As is made evident
through the testimony quoted above, Narayanan declined to go along with
the questioner’s suggestion (1) that NTP’s invention as demonstrated at the
1990 Comdex Trade Show was a big breakthrough, (2) that Sears, United
Parcel Service, and Xerox Corporation were ecstatic about what they saw,
and (3) the customers at the trade show were expressing incredible disbelief
at what they were seeing.
Based on inventor Campana’s own description, the demonstration at
the 1990 Comdex Trade Show involved a RF receiver that (1) was
detachable from the AT&T Safari laptop computer and (2) included its own
storage to hold the wirelessly received email message when it is not
connected to the laptop computer. According to NTP’s own specification,
the detachable RF receiver with its own memory is what provides NTP’s
invention important advantages over prior art. As we have noted above,
none of NTP’s claims on appeal requires an RF receiver which (1) receives
email while the receiver is detached from the destination processor, (2)
includes its own memory unit, and (3) operates to receive wireless email
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when the destination processor is not connected to the RF receiver and not
turned on.
Accordingly, NTP’s alleged industry recognition based on the
demonstration at the 1990 Comdex Trade Show is not commensurate in
scope with what NTP has claimed. Also, assuming that the advantages
stated in NTP’s specification are what made NTP’s demonstration a success,
NTP has not shown nexus between the full scope of the claimed invention
and the evidence of nonobviousness.
NTP's alleged long-felt but unresolved need argument depends on use
of a detachable RF receiver which includes its own memory and which
operates to receive wireless email even when the destination processor is
turned off and not connected. Because NTP’s claims are broader and do not
require such an RF receiver, NTP has not shown nexus between its solution
and the claimed invention. We are unable to find that the evidence of
nonobviousness is commensurate in scope with NTP’s claimed invention.
Furthermore, satisfaction of a long-felt but unresolved need is not
evidence of nonobviousness unless it is shown that widespread efforts of
skilled workers having knowledge of the prior art had failed to find a
solution to the problem. In re Allen, 324 F.2d 993, 997 (CCPA 1963). See
also Toledo Pressed Steel Co. v. Standard Parts, Inc., 307 U.S. 350, 356
(1939).
NTP has not directed our attention to evidence that there was
widespread attempt by skilled workers in the art for a long period of time to
send an email message wirelessly to a destination processor, and that all
such attempts failed to achieve successful transmission. NTP does not
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identify and explain what technical problem was solved by NTP’s invention
which had allegedly kept the entire field of skilled workers from
successfully transmitting an email message wirelessly to a destination
processor despite repeated and serious attempts to do so over a long period
of time. NTP has not established that wireless transmission of an email
message had been a long-felt but unresolved need at the time of NTP’s
invention.
Lastly, NTP has failed to establish that persons actually working in
the field were aware of the teachings of the prior art cited by the Examiner.
That wireless transmission of email is desirable does not mean widespread
efforts were involved in implementing it and that all such efforts ended in
failure for a long period of time until NTP attempted to do the same.
2. Alleged Commercial Success
According to NTP, there is "commercial success" because NTP
successfully sued RIM for infringement of the NTP ‘960 patent by a
certain BlackberryTM device of RIM. On page 86 of its Appeal Brief,
NTP states:
In fact, Judge Spencer -- the presiding judge in the
litigation between the Patent Owner and RIM -- commented on
the compelling strength of Patent Owner’s evidence of
commercial success: “Furthermore, [Patent Owner] offered
irrefutable evidence of nonobviousness in the form of
tremendous commercial success of the infringing Blackberry
products, which indicated the satisfaction of “long-felt” need.
See White Dec. ¶ 5.

Also on page 86 of its Appeal Brief, NTP states: “Indeed, at trial, there was
evidence that the $405M of RIM’s infringing sales were due to the
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inventions described in the NTP patents.” (Emphasis added.) (See White
Declaration ¶ 21).
NTP does not describe for us the components or manner of operation
of the infringing BlackberryTM devices. It appears to be NTP’s legal
position that it does not matter what components RIM’s BlackBerryTM
device has or how RIM’s BlackBerryTM device operates as long as the
device infringes and falls within the scope of an NTP claim. Note NTP’s
argument on page 89, last line, of the appeal brief that “[t]hat the
BlackBerryTM system meets the language of the claims is beyond dispute.”
NTP’s position regarding the law is simply wrong, being inconsistent with
binding precedent cited above and which governs prosecution before the
USPTO.
As is discussed above, NTP’s claims are so broad that they can be
infringed by a system having either (1) an RF receiver which is detachable
from the destination processor, which includes its own memory, and which
receives email even when the destination processor is not turned on or is not
connected, or (2) an RF receiver that does not share those attributes. In case
of the latter, the alleged commercial success (1) does not have much to do
with what NTP’s own specification states are important advantages of the
invention over the prior art, and (2) is not commensurate in scope with the
claimed invention. Also in the case of the latter, NTP has not shown
“nexus” between the alleged commercial success and the claimed invention.
NTP’s not describing the components and operation of the infringing
devices precludes us from ascertaining whether they embody a technical
breakthrough beyond a detachable RF receiver with its own memory, which
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can account for the alleged commercial success. For instance, it cannot be
ruled out that the devices sold do not use a detachable RF receiver with its
own memory but yet still permit user access of email messages whenever the
user desires access without requiring the destination processor to be turned
on and carried with the user all the time.
Citing a U.S. District Court decision which was affirmed by the
Federal Circuit, Rite-Hite Corp. v. Kelley Co., 629 F. Supp. 1042, 1055-56
(E.D. Wis. 1986), aff’d, 819 F.2d 1120 (Fed. Cir. 1987), NTP argues in its
appeal brief on page 93, line 7, that even though RIM’s BlackberryTM system
includes unclaimed features such as its small size, that “should in no way
obscure the fact that it was and still is an incredibly successful product that
embodies the ‘611 Patent claims as affirmed by the CAFC.” We have
reviewed the Federal Circuit’s decision on appeal from the Eastern District
of Wisconsin. The issue of nexus with respect to secondary consideration
factors is simply not discussed in the Federal Circuit opinion.
The District Court’s opinion, which is not binding authority for the
Board, does not support the notion that unclaimed but important features in a
commercial product fail to undermine the patent owner’s assertion of nexus
between the alleged commercial success and the claimed invention. They
do, under Federal Circuit precedent, require a showing of nexus already
discussed above.
The U.S. District Court’s decision in Rite-Hite Corp. is not much
different, because the Court determined that specific patented features were
a significant cause of the product’s commercial success. Rite-Hite Corp.,
629 F. Supp. at 1055. NTP has not shown that that is the case here. NTP
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simply has not shown that the merits of NTP’s invention, in particular the
advantages described in NTP’s specification, constitute a significant cause
of RIM’s sales. NTP does not even allege that RIM’s BlackberryTM devices
include a detachable RF receiver with its own memory, which provides the
advantages of NTP’s invention as stated in the specification.
Also, for example, NTP has not directed our attention to evidence that
the difference in size between that of a laptop computer and a hand held cell
phone is not a significant factor adding to the sales of RIM’s BlackberryTM
devices. All of NTP’s disclosed embodiments are directed to laptop or
notebook sized computers, not hand-held cellular telephones. NTP’s
specification touts as an advantage the ability for the user to simply carry the
RF receiver rather than the laptop computer as we have discussed above.
The size of the device does matter. We seriously doubt that if RIM’s
BlackberryTM devices were as big as a typical laptop or notebook computer,
their sales and market share would be the same.
Note also that NTP refers to evidence presented at the infringement
trial that RIM’s infringing sales were due to the inventions “described” in
the NTP patents. The focus is misplaced. NTP must establish a nexus
between the evidence of nonobviousness and the “claimed” invention, not
between the evidence of nonobviousness and the invention “disclosed” in its
specification. In re Fielder, 471 F.2d 640, 646 (CCPA 1973); In re Tiffin,
448 F.2d 791, 792 (CCPA 1971).
The disclosed invention requires as a key component an RF receiver
which is detachable from the destination processor and which includes its
own memory, so that the RF receiver can receive and store email even when
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the destination processor is not turned on or is not connected. That feature,
however, is not required by any NTP claim.5
In its Appeal Brief (Brief 89), NTP cites to the trial testimony of its
own witness Terry Lee Musika (Trial Tr. 620):
the ability to access email in real time and return messages
with RIM’s Blackberry is a breakthrough. . . . And that really
relates to both the commercial success, again, and the
advantages over the old mode. (Emphasis added.)

Absent additional technological development, receiving email in real
time would require the embodiment described in NTP’s specification
involving an RF receiver which is detachable from the destination processor,
which has its own memory, and which receives email even when the
destination processor is not turned on or connected to the RF receiver. Such
an RF receiver ensures that emails are received when they are sent, even in
the absence of the destination processor which is connected and turned on.
But the claimed invention has no requirement for a detachable RF receiver
including its own memory.
In any event, it is uncertain why $405M of RIM’s infringing sales
with respect to another patent constitutes commercial success of the claimed
invention in the ‘611 patent. It is well established that absolute sale numbers
without market share data does not establish commercial success. See, e.g.,
In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). NTP’s appeal brief does
not discuss and present market share information. While $405M is a large
sum, and may well represent commercial success of something, on the basis

5 Claims 70-72 recite that the receiver or processor are “portable” and that
transfer of information between the receiver and processor occurs when the
two are “electrically connected”.
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of its appeal brief NTP simply has not proven its case with respect to the
claims on appeal. What about the extent of all non-infringing sales in the
industry? We decline to determine that NTP has shown commercial success
simply because a U.S. District Court has found on the record before it during
the civil action between NTP and RIM relating to another patent that there
was commercial success. NTP has failed to demonstrate why, even
assuming that there was commercial success with regard to the invention of
six claims in another patent, that success translates to commercial success of
the claimed invention of all 133 claims before us.
For all of the foregoing reasons, NTP has failed to establish the
necessary “nexus” between the evidence of alleged commercial success and
the invention claimed. The evidence of commercial success is not
commensurate in scope with NTP’s claimed invention.
3. Alleged Inability to Design Around
On page 88 of its Appeal Brief, NTP asserts that the inability of RIM
to design around NTP’s patent claim constitutes strong evidence of
nonobviousness. Specifically, in a section titled “Inability to Design
Around,” NTP states (Brief 88):
Here, over three years after the trial in which RIM was
found to willfully infringe six claims of the ‘611 Patent and
with millions of dollars of damages at stake, RIM recently
announced that RIM had developed a design around, yet
remarkably indicated that it prefers not to implement it. See
White Supp. Dec. at ¶¶ 5-6. With very significant money
hanging in the balance, that RIM waited over three years to
allegedly develop a design-around that it never implemented is
strong evidence of nonobviousness.

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White’s Supplemental Declaration at paragraphs 4 and 5 refers
us to the “United States District Court for the Eastern District of
Columbia.” (White Supp. Dec. A15, p. 2). We presume that NTP
means the United States District Court for the Eastern District of
Virginia. However, it does not appear to us that the ‘611 patent was
involved in that proceeding, so how NTP’s representation helps its
case is unclear to us. (A18, Settlement Agreement, recital paragraph
1). NTP has not shown that any claim of the ‘611 patent has been
found by any court to have been infringed by any party.
NTP cites no authority which indicates that failure to design around a
patented invention after the patent issues, when not coupled with failed
attempts to design the claimed invention before the patentee’s invention,
constitutes objective evidence of nonobviousness. The case authority cited
by NTP, Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272,
1285 (Fed. Cir. 2000), indicates that first and foremost it is the infringer’s
repeated failure to design the claimed invention which supports a conclusion
of nonobviousness. An infringer’s failure to design around the claimed
invention after the patentee’s patent issues can strengthen the indication of
nonobviousness if the infringer had tried but failed to design the claimed
invention prior to the patenting by the patentee. Id.
Here, as we have already discussed, NTP failed to direct our attention
to evidence that skilled workers in the art, prior to NTP’s invention, made
repeated efforts to send a wireless email message to an RF receiver
associated with a destination processor but were met with consistent failure.
In the absence of previous failed attempts to design the claimed invention,
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subsequent inability to design around the claimed invention after the patent
issues is not indicative of nonobviousness. It may just reflect the breadth of
NTP’s claims. In that connection, note that if any and all attempts to solve a
problem lead to something within the scope of the claimed invention, that
would indicate obviousness, not nonobviousness of the claimed invention.
In any event, NTP’s argument that RIM failed to design around NTP’s
claimed invention is not supported by the evidence cited by NTP. The
supplemental declaration of William White, cited by NTP, states in
paragraph 5 that RIM recently informed investors that it has been working
on a design around option but that it does not want to implement such an
option. The testimony is hearsay. While perhaps "admissible" in the
context of this ex parte case, we nevertheless decline to credit it. It merely
reflects what William White says about what RIM had told RIM’s investors.
Even if we were to credit it, it does not support what NTP asserts, because
simply choosing not to implement a design around is not the same as having
tried but failed to design around NTP’s claimed invention. The decision not
to implement a design around may be due to a myriad of reasons. There is
no basis to equate that decision to an inability to design around the claimed
invention.
Paragraph 6 of the supplemental declaration of William White
(Appendix A15) is reproduced below:
Further, on January 17, 2006, RIM informed the United
States District Court for the Eastern District of Columbia [sic—
Virginia] that RIM’s “workaround” would be difficult and
complicated. See Defendant Research in Motion, LTD.’s Non-
Confidential Consolidated Memorandum on Remand Issues,
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January 17, 2006, attached hereto as Exhibit A, pages 27 and
46-48.

We have read the cited portions of RIM’s memorandum to the Eastern
District of Virginia and find that the “difficulty” referred to in connection
with a “workaround” does not have to do with technical issues on
developing something that does not infringe, but has to do with the logistics
and inconvenience with regard to carrying out a software upgrade for
existing customers. The cited portions of the memorandum do not indicate
that RIM failed to develop a technical “workaround” but only that for
various business reasons implementing the “workaround” would not be
desirable.
We also do not credit the following statement in paragraph 5 of the
supplemental declaration of William White:
Despite the sworn testimony of Mr. Lazaridis that RIM could
not design around the patents in suit, RIM has recently
informed investors that it was working on a design around
option. It then states that it does not want to implement such an
option. This is further evidence of the non-obvious nature of
the claims of the ‘611 patent in that any design around RIM has
developed is undesirable.

The declaration of Mike Lazaridis is reproduced below and clearly does not
reflect a statement that RIM had attempted to design around the patents and
failed:
RIM continues the process of attempting to design around the
NTP patents. There is no guarantee that RIM’s engineers will
find a design-around solution, and whether or not successful,
the efforts will take substantial resources, time and money.
Even if a design around solution is found, there would be an
inevitable interruption in service to implement such solution,
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causing RIM to lose a significant portion of the Company’s
competitive advantage, customers, revenues and gross profit.

Finally, it is noted that NTP’s own argument indicates that RIM had
developed a design around NTP’s claimed invention but simply chose not to
implement the alternative design. The wording used by NTP in its brief to
characterize the alleged circumstance is that “RIM had developed a design
around, yet remarkably indicated that it prefers not to implement it.” (Brief
88). It suffices here to note only that choosing not to implement a design
which had been developed is not the same as having failed to develop the
design. NTP’s argument is misplaced.

4. Alleged Copying
Citing paragraph 22 of the White declaration, NTP argues in its appeal
brief that “AT&T provided the [NTP] patented technology to its strategically
important customer Skytel, thus allowing Skytel to copy the technology
developed by the ‘611 Patents’ inventors.” (Brief 87). Paragraph 22 of the
White declaration is reproduced below:
22. With regard to copying, NTP presented
unchallenged evidence during its trial against RIM that AT&T
provided the patented technology to its strategically important
customer Skytel, thus allowing Skytel to copy the technology
developed by the Campana patent inventors.

The above-quoted testimony does not cite to any underlying evidence which
we can review. It represents a bare statement of William C. White, the
President of NTP, whose testimony we do not give much weight given his
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mischaracterization of the declaration of Mike Lazaridis discussed above
and his manifest interest in the involved patent.
William C. White also does not specifically discuss the evidence, let
alone how it could have been “challenged.” Even assuming that pertinent
evidence was presented in the infringement trial, NTP could have presented,
but elected not to present, the evidence to the Examiner for consideration
and discuss how the evidence supports its assertion of copying by others.
NTP has not shown what product was produced by Skytel and to what extent
it duplicated NTP’s demonstrated device. Copying by Skytel, as alleged by
NTP, has not been established.
Copying is also one of those secondary consideration factors which
can cut both ways. In Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d
1015, 1028 (Fed. Cir. 1985), the Court of Appeals for the Federal Circuit
stated:
Even widespread copying could weigh toward opposite
conclusions, depending on the attitudes existing toward patent
property and the accepted practices in the industry in question.
It is simplistic to assert that copying per se should bolster the
validity of a patent.

Even if Skytel “copied” NTP’s demonstrated system, NTP has not shown
that Skytel generally respected NTP’s patent rights or that Skytel has taken a
license of NTP’s ‘611 patent.
Infringement by RIM also does not establish copying by RIM. As is
stated by the Court of Appeals for the Federal Circuit in Iron Grip Barbell
Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004):
Not every competing product that arguably falls [sic] within the
scope of a patent is evidence of copying. Otherwise every
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infringement suit would automatically confirm the
nonobviousness of the patent. Rather, copying requires the
replication of a specific product.

Moreover, if the alleged copier duplicated NTP’s disclosed
embodiment using a detachable RF receiver having its own memory to
obtain the advantages described in NTP’s specification over prior art, then
the evidence of copying is not commensurate in scope with NTP’s claims.
As is already discussed above, none of NTP’s claims on appeal requires an
RF receiver that is detachable from the destination processor and that
includes its own memory for storing the received email messages.
5. Licensing Activity
NTP asserts that it has licensed the ‘611 patent to Nokia Inc., a major
manufacturer of mobile telephones and related hardware and software
products, Good Technology Inc., and Visto Corporation. (Brief 87).
However, the mere existence of several licensees, without more specific
information about the circumstances surrounding the licensing, is not a
good indicator of nonobviousness. In EWP Corp. v. Reliance Universal
Inc., 755 F.2d 898, 907-08 (Fed. Cir. 1985), the Court of Appeals for the
Federal Circuit stated:
Such [licensing] programs are not infallible guides to
patentability. They sometimes succeed because they are
mutually beneficial to the licensed group or because of business
judgments that it is cheaper to take licenses than to defend
infringement suits, or for other reasons unrelated to the
unobviousness of the licensed subject matter.

The record contains no testimony from any licensee with regard to
why the licensee took a license from NTP. It is unknown how much of the
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decision to take a license stems from a business cost-benefit analysis with
regard to defending an infringement suit or from another business reason,
rather than from acknowledged merits of NTP’s invention. NTP also does
not disclose how many entities refused to take a license or why some
entities, if any, refused to take a license. Three licensees may not represent a
very successful licensing program if the field of potential application of
NTP’s technology includes a large number of potential licensees. It is also
uncertain whether the terms of the alleged licenses are made unusually
favorable to the licensee just so that NTP could claim it had licensed its
invention to some.
To the extent that NTP asserts commercial success based on the
existence of the licenses, it has not established the market picture insofar as
how much of the commercial market are represented by products which are
sold under the licenses and how much are not. The mere number of
licensees does not establish substantial commercial success.
Furthermore, NTP has not described the specific structure and
operation of the devices made or marketed by its licensees such that we can
evaluate whether and to what extent the devices embody what NTP
describes as the reason why its invention is advantageous over the prior art,
i.e., use of a detachable RF receiver which has its own memory. We also
cannot assume that the licensees took the licenses for reasons substantively
related to each and every one of NTP’s hundreds of claims. In our view, it is
significant that NTP filed no declaration from a representative of any one of
the three licensees attesting to and praising the merits of NTP’s invention or
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which discusses the circumstances surrounding the taking of a license from
NTP.
Because it is NTP’s burden to establish nexus between the evidence of
nonobviousness and the merits of its claimed invention, the murky picture of
the commercial business environment as noted above leads us to conclude
that NTP has failed to credibly establish the necessary nexus between the
licensing activity and the merits of its claimed invention.
Note also that none of NTP’s independent claims argued on appeal
requires an RF receiver which is specifically detachable from the destination
processor, which includes its own memory to store email messages, and
which can operate to receive email in the absence of the destination
processor. Given that those are the features NTP’s specification describes as
providing important advantages over the prior art, the licensing activity, to
the extent that they allow the licensees to make and use NTP’s disclosed
invention, is not commensurate in scope with what is claimed.
NTP has informed the Board that RIM, who was found to have
infringed the NTP ‘960 patent and who was unsuccessful in asserting
invalidity of any claim of the NTP ‘960 patent in civil litigation, has taken a
license under the NTP ‘960 patent. That fact is not of substantial help to
NTP, as the litigation and charge of invalidity reflects RIM’s firm position
that certain claims of the NTP ‘960 patent are invalid. Licensing activity
after a successful defense against an assertion of invalidity does not have the
same character as licenses arranged without a challenge of validity.
Moreover, RIM may have agreed to take a license during a phase of
the civil action involving a question of whether an injunction should be
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issued by the Eastern District of Virginia. In other words, the taking of any
license may not have been an issue when obviousness was considered.
Rather, agreeing to take a license would be one factor a court could consider
particularly if the patentee itself is not commercially marketing an infringing
device.
Also, NTP has not described the structure and operation of RIM
devices which have been sold under the license. If they implement NTP’s
disclosed embodiment to achieve the disclosed advantages, then the
licensing activity is not necessarily commensurate in scope with what is
claimed as we have already discussed above in connection with RIM’s
product which was found to have infringed certain claims of the NTP ‘960
patent. The lack of information also precludes us from meaningfully
evaluating whether other advances in the art are primarily responsible for the
sales and for RIM’s interest in selling a device within the scope of NTP’s
claims.
Conclusion
For reasons discussed above, the evidence of nonobviousness is not
commensurate in scope with what NTP has claimed, and NTP has failed to
establish the necessary nexus between the evidence of nonobviousness and
the claimed invention. The evidence of nonobviousness as discussed above
is very weak, if it is even relevant. While we have discussed each NTP
argument individually, we also find and hold that the arguments collectively
and evidence, as a whole, do not establish credible evidence of non-
obviousness. In making our decision on the obviousness of NTP’s claims
over prior art, the entirety of the evidence submitted, including the evidence
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based on the applied prior art and the evidence of nonobviousness based on
secondary consideration factors, has been considered as a whole.
F. Telenor ’89 as an Authentic
Document and a Printed Publication

1. Introduction
Included as part of the prior art relied upon by the Examiner, are eight
documents which form part of a library collection at the University Library
of the Norwegian University of Science and Technology (Library). The
documents are Reference C1 through Reference C8:
1. Reference C1—TeleNor '86: Terje Henriksen et al.,
Mobile Data Network System Description, Norwegian
Telecommunications Administration Research Department Report
No. 30/86, April 1986, Kjeller, Norway, Deposited at the Norges
Teknisknaturvitenskapelige Universitet (hereinafter NTNU—The
Technical University Library of Norway) Library in Trondheim,
Norway, May 23, 1986.
Received in the Library: 22 May 1986.
Catalogued: 24 June 1986.
2. Reference C2—TeleNor '89, Vol. 1: Stig Kaspersen et al.,
Mobile Data Network Description, Volume 1: Network Architecture,
Addressing and Routing, Teledirektoratets forskningsavdeling,
TF-Report 3/89, 6 February 1989.
Received in the Library: 23 February 1989
Catalogued: 12 October 1989
ISBN: 82-423-003-8
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3. Reference C3—TeleNor '89, Vol. 2: Stig Kaspersen et al.,
Mobile Data Network Description, Volume 2: Services and Service
Elements, Teledirektoratets forskningsavdeling, TF-Report 4/89,
6 February 1989.
Received in the Library: 22 February 1989
Catalogued: 12 October 1989
ISBN: 82-423-0004-6
4. Reference C4—TeleNor '89, Vol. 3: Geir Ivar Thorud et
al., Mobile Data Network Description, Volume 3: Protocols and
Protocol Hierarchy within the MDN, Teledirektoratets
forskningsavdeling, TF-Report 5/89, 6 February 1989.
Received in the Library: 24 April 1989
Catalogued: 12 October 1989
ISBN: 82-423-0005-4
5. Reference C5—TeleNor '89, Vol. 4: Geir Ivar Thorud
et al., Mobile Data Network Description, Volume 4: Specification of
DTL and DTP within the MDN, Teledirektoratets forskningsavdeling,
TF-Report 6/89, 6 February 1989.
Received in the Library: 22 February 1989
Catalogued: 12 October 1989
ISBN: 82-423-0006-2
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6. Reference C6—TeleNor '89, Vol. 6:6 Stig Kaspersen et al.,
Mobile Data Network Description, Volume 6: Requirements to the
Base Stations, Teledirektoratets forskningsavdeling, , TF-Report 7/89,
6 February 1989.
Received in the Library: 22 February 1989
Catalogued: 12 October 1989
ISBN: 82-423-0007-0
7. Reference C7—TeleNor '89, Vol. 7: Stig Kaspersen
et al., Mobile Data Network Description, Volume 7: Requirements
to the Mobile Stations, Teledirektoratets forskningsavdeling,
TF-Report 9/89,7 6 February 1989.
Received in the Library: 24 April 1989
Catalogued: 12 October 1989
ISBN: 82-423-0009-7
8. Reference C8—TeleNor '89, Vol. 8: Geir Ivar Thorud et
al., Mobile Data Network Description, Volume 8: Specification of the
MDN—MHS Interworking, Teledirektoratets forskningsavdeling,
TF-Report 8/89, 6 February 1989.
Received in the Library: 24 April 1989
Catalogued: 12 October 1989

6 There is no public Volume 5.

7 In order to avoid possible confusion, we advise the reader to be aware that
Reference C7 relates to FT-Report 9/89 Volume 7 and Reference C8 relates
to FT-Report 8/89 Volume 8. While the Volume numbers are in order, the
FT-Report numbers 9/89 and 8/89 are out of order. On the merits of the
issues before us, we attribute no significance the order in which documents
are numbered.
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ISBN: 82-423-0008-9

Copies of the eight documents were provided to the USPTO as part of
an information disclosure statement in this reexamination, but originally as
part of a third-party request for ex parte reexamination of a different NTP
patent. Additional declarations were provided in Third Party Requester
Comments February 28, 2006 in this proceeding.
The receipt dates, catalogue dates and ISBN data were obtained from
a Torbjorn Digernes letter to Kevin Anderson, dated 16 January 2006,
page 3 of 5 (hereinafter Digernes letter).
NTP maintains that the eight documents are not prior art. First,
according to NTP, the authenticity of the documents—as of a date one year
prior to NTP's filing date—is questionable. Second, further according to
NTP, the documents were not catalogued by and in the University Library of
the Norwegian University of Science and Technology in such manner as to
be reasonably accessible to the public in connection with NTP’s field of
invention.
2. Photos
We have taken photographs of portions of the eight documents which
are said to have been examined by NTP witness David Richard Browne.
The photos were taken on 30 and 31 October 2008. A listing of the
photographs appears as Appendix 1 to this opinion. The photographs are
found on a CD which accompanies this Memorandum Opinion and are in
jpeg format. Reference to a photograph is by the last 3 numbers, e.g., (004)
means photograph:
2008-4587.30October2008.004.jpg
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listed in Appendix 1 as 004.
Appendix 1 lists the photos (1) in photograph number order and
(2) by Reference C number.
3. Findings of Fact
The Library
The Norwegian University of Science and Technology (the Library) is
a state-owned university and a public body. Digernes letter, page 1 of 5.
The Library is located at Trondheim, Norway—which is about 375
kilometers almost directly north of Oslo.
The Library has no interest in any patent dispute involving NTP and
RIM. Id.
According to the Library, both NTP (appellant) and RIM (third-party
reexamination requester) sought the assistance of the Library in seeking
certain information. Id.
As would be expected of a public library, it is the Library policy to
provide equal treatment to any interested party seeking information from the
Library. Id.
The Library has provided the following information (Digernes letter,
pages 3 and 4 of 5) [matter in brackets added]:
As our routine was for receiving reports at the time [1986
and 1989], the reports were stamped and inserted on our cardex
(the date was written down on a cardex card for when we
received each report in the series) right after they were received
in the library or some days after, dependent of the backlog, but
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not more than 2 weeks after, according to our Serials
Department.
After cardex the reports were indexed and classified. For
classification of our technical literature we use the UDC
system.
At the time we received these reports [1986 and 1989],
the name of the Main Library for Technology under [the]
NTNU Library were [sic—was the] Technical University
Library of Norway, and belonged to Norges tekniske høgskole
(NTH). It merged with several others to form the NTNU
Library from 1990. UDC was used at the whole Technical
University Library of Norway.
The signature of the whole series is "621.39(06) tq R18"
and that is where all the reports in the series are placed on the
shelf. 621.39 is "telecommunications" and a rather general
number, because it is used for the whole series. In addition to
that each report was classified and indexed with more special
numbers and subject headings, like f.eks. Mobile Data network
description vol. 8, that has UDC 681.324 and 621.391:006 and
the subject headings "Datamaskinnett" (computer networks)
and "kommunikasjonsprotokoller" (communication protocols).
That means the reports could be found by searching on these
UDC numbers and subject headings in BIBSYS, or looked up
on these numbers and words in our microfiche edition of
BIBSYS. "Anal" after the signature, means that each number in
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the series was "analyzed" i.e. each report is classified and
indexed and is catalogued in the database with author, title etc.
That is done to make each report in the series easier to find in
the catalogue, because it then can be searched in many several
ways: On all the authors (when there are not more than 3), title,
classification numbers, subject headings, ISBN, title of the
report etc. (To see all the search elements in the record, search
"BIBSYS websearch"
http://wgate.bibsys.no/search/gen?lang=E, then click "Export
using format MARC").
After indexing the reports were sent to cataloguing. We
catalogue all our literature in our online catalogue in BIBSYS.
The BIBSYS catalogue is the common database for the
Norwegian university libraries and colleges and other research
libraries in Norway, about 100 all together. For the cataloguing
we use the "Anglo American Cataloguing Rules" (AACR2) in
Norwegian translation by I. C. Spangen, which also were the
rules used back in 1986. The machine readable format we use
for cataloguing is MARC (BIBSYSMARC). BIBSYSMARC is
built on the Norwegian NORMARC and Library of Congress'
LCMARC.
After cataloguing, the catalogue records were proofread
by another person at the Catalogue Department before the
reports were sent down and placed on the shelf in the
periodicals collection.
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From the moment the reports were catalogued in
BIBSYS, they were searchable and public[ly] available. They
could be borrowed by anybody who came to the library and at
that time we had inter-library loan connections with all parts of
the world. Our catalogue could be searched online by the
public all since we started to catalogue in BIBSYS in 1980.
And a microfiche copy of the catalogue, both alphabetical and
systematical, came usually every 3 months. By the way no
microfiche edition was produced between May 1989 and June
1990, because the BIBSYS system came in a new version
(BIBSYS II) at that time. The microfiche were distributed to
several libraries, and the search elements in the microfiche were
the same as by searching online. The Technical University
Library of Norway also delivered their catalogue records to
"Norsk samkatalog"—the Norwegian Union Catalogue, which
also at that time came in a microfiche edition that was
distributed to a lot of libraries. (NUC for monographs:
http//www.nb.no/baser/sambok/english.html) NUC also exists
for periodicals etc.). The reports can therefore also be searched
in NUC. It is not checked [sic—We did not check to see] if the
reports could be searched in any other reference databases.
How BIBSYS was searched outside Norway before the World
Wide Web is hard for us to say anything about.

Based on the Digernes letter, we find that the following steps took
generally take place in the receipt through shelving of a document:
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1. Receipt;
2. Date stamp receipt;
3. Add document information to cardex;
4. Index and classify;
5. Catalogue (search can be conducted at this point);
6. Proofread;
7. Shelve.
Shelving in this case occurred "prior to the relevant priority date of
the … patents" involved in these reexamination proceedings. Supplemental
Declaration of V. David Rhyne, ¶ 48, Assumption c; Brief, page 38. The
shelving date is not an issue on appeal.
As noted earlier, the Library states that it has a policy of helping all
who seek its assistance.
Representatives of RIM [identified as "Mr. Sylthe" (believed to be
Olav Sylthe) and "Mr. Novak" (believed to be Gregory V. Novak)] are said
to have visited the Library. Two weeks later, Keith Anderson visited the
Library seeking what would appear to be similar information as the RIM
representatives. It may be that Anderson did not tell the Library that he
represented NTP. That detail was nevertheless independently discovered by
the Library through articles in the American press. Digernes letter, page 1
(2d and 3d full ¶) of 5.
Pasquine Declaration
The third-party reexamination requester submitted a Declaration of
Mark Vincent Pasquine.
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The declaration is said to have been executed at Bergen, Norway on
3 January 2006.
On 17 June 2005, Pasquine was told by the Library that the eight
documents relied upon by the Examiner were available for loan (i.e., could
be borrowed from the Library). (Pasquine Declaration, ¶ 2).
Pasquine does not say what prompted him to ask the Library if the
documents "were available for loan."
The eight documents were checked out of the Library on 17 June
2005. (Pasquine Declaration, ¶ 2).
The eight documents were "shipped" to the United States on 17 June
2005 and according to Federal Express records were delivered on 23 June
2006. (Pasquine Declaration, ¶ 4).
According to a document which is said to be a Federal Express record,
the delivery occurred on 23 June 2005 at 10:22 a.m. and delivery was signed
for by an individual identified by Federal Express as being L. Johnson. (See
Exhibit A to the Pasquine Declaration).
The position occupied by L. Johnson is not stated in the Pasquine
Declaration.
A third-party reexamination request in Reexamination Control
90/007735 (involved in Appeal 2008-4602) was filed on 28 September 2005.
A copy of Reference C7—TeleNor '89, Vol. 6 submitted on
28 September 2005 with the third-party request for reexamination bears a
stamp as follows
RECEIVED
JUNE 23, 2005
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NOVAK DRUCE—DC
Novak Druce Deluca & Quigg, a law firm located in the District of
Columbia, represents the third-party requester.
A possible inference is that Pasquine obtained the eight documents
and sent them via Federal Express to Novak Druce for its use in preparing a
third-party reexamination request.
Pasquine says that he was able to confirm that the eight documents
were received back at the Library no later than 12 August 2005. (Pasquine
Declaration, ¶ 5).
A Federal Express tracking document is consistent with Pasquine's
statement. See Exhibit B of the Pasquine Declaration. Exhibit B facially
reveals that a package was shipped from Washington, D.C., on 9 August
2005 and arrived via (1) Indianapolis, Indiana, (2) Paris, France and
(3) Gardermoen, Norway ultimately arriving in Trondheim, Norway on
12 August 2005 at 10:46 a.m. Exhibit B facially shows that a J. Lundquist
"signed" for delivery of the Federal Express package.
According to Pasquine, he talked with a representative of NTNU on
16 August 2005. Further according to Pasquine, the representative was able
to confirm that the documents were back at the Library. (Pasquine
Declaration, ¶6).
On 3 January 2006, Pasquine spoke with Birgit Storleer at the Library
and "she [is said to have] confirmed" that the eight documents were
"currently available in the NTNU [L]ibrary." (Pasquine Declaration, ¶8).

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Sorsdahl Declaration
The third-party reexamination requester submitted a Declaration of
Petter Sorsdahl.
The declaration is said to have been executed at Gothenberg, Sweden
on 5 January 2006.
Sorsdahl has been a Swedish patent attorney since 1999. (Sorsdahl
Declaration, ¶ 2).
From 1984 through 1995, Sorsdahl was a patent examiner in the
Swedish Patent Office. (Sorsdahl Declaration, ¶ 3).
During his tenure as a patent examiner, Sorsdahl performed
"hundreds" of patent searches. (Sorsdahl Declaration, ¶ 4).
Although he does not say why, there came a time when Sorsdahl
reviewed the specification, including claims, of NTP U.S. Patent 5,436,960
and NTP U.S. Patent 6,317,592. (Sorsdahl Declaration, ¶ 6).
Sorsdahl regards the general subject matter of the two patents in the
technical field of mobile data communications and electronic
telecommunications and messaging, including "mobile data networks" and
"mobile telephony." (Sorsdahl Declaration, ¶ 7).
Sorsdahl is of the opinion that it would be an exercise of reasonable
diligence to search various Nordie-European and Scandinavian universities
and libraries for printed publications relating to the involved technical field.
(Sorsdahl Declaration, ¶ 7).
A search of the various card catalogs and indexes of the Norwegian
University of Science and Technology (NTNU) would have been
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appropriate. Also appropriate would have been a search in a multiple
catalogue search facility at the University of Karlsrube in Germany.
(Sorsdahl Declaration, ¶ 8).
Based on his experience, Sorsdahl believes that a search in 1989 at
NTNU would have located the eight documents upon which the Examiner
relies. (Sorsdahl Declaration, ¶ 9).
Sorsdahl's opinion is based on a search he conduced of NTNU library
records both through the BIBSYS system and through an interview of library
staff at NTNU. The search and interview were conducted on 26 October
2005. (Sorsdahl Declaration, ¶ 10).
Based on his discussion with NTNU staff, Sorsdahl was able to
confirm that the eight documents (1) were still in the Library's catalogue and
index collections and (2) could be checked out of the Library at that time.
(Sorsdahl Declaration, ¶ 11).
Declaration of Kevin P. Anderson
We now shift from third-party requester activities to those of the
patent owner.
Anderson is an attorney representing NTP. (Anderson Declaration,
¶ 2).
Although he does not say why, there came a time when Anderson was
"apprised" of what he refers to as "alleged documents" "supposedly" located
in the NTNU Library. (Anderson Declaration, ¶ 2).
On or about 1 July 2005, Anderson initiated an investigation into the
documents. (Anderson Declaration, ¶ 2).
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He made an inquiry (possibly by phone—Anderson does not say how
the inquiry was made) about the "authenticity of these alleged documents."
(Anderson Declaration, ¶ 3).
Whatever the nature of the Anderson inquiry, he says he found out
that the documents were checked out. (Anderson Declaration, ¶ 3).
The documents, of course, are the eight documents upon which the
Examiner relies.
Apparently, Anderson attempted to determine who had checked the
documents out of the Library. But, to his disappointment, he promptly
learned that in Norway one cannot obtain information on who checks books
out of a library. (Anderson Declaration, ¶ 3). We take official notice of the
fact that the same policy exists in many libraries in the United States.
On 18 August 2005, Anderson traveled to Trondheim, Norway, to
visit the NTNU Library.
Anderson was again advised that the documents were "checked out."
Anderson was told that a typical check out time is three months. The
good news was that he could put his name on a waiting list. The bad news
was that the Library had no means to force someone to return checked out
material. (Anderson Declaration, ¶ 4).
Anderson states (Anderson Declaration, ¶ 5):
During my visit to the NTNU [L]ibrary, I was also
advised that the [L]ibrary has no mechanism for verifying that a
document, such as the alleged Telnor documents [i.e., the eight
documents relied upon by the Examiner], was returned to the
library with [sic—in] the same condition and [with the same]
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contents as existed for the document when it was checked out.
I was also advised that the [L]ibrary cannot verify whether the
documents [which have been checked out and returned] have
the same content as when originally deposited.
We decline to give any weight to the "testimony" in ¶ 5 of the
Anderson declaration. Unlike much of the other hearsay "testimony" before
us, there is no documentary corroboration of the hearsay in ¶ 5 of the
Anderson declaration. It is testimony of a witness with an interest—the
witness represents the interests of NTP. Moreover, we do not find the
testimony credible. In our view, at best it represents Anderson's twist on a
conversation he said he had with an individual employed by the Library.
Declaration of David L. Gunn
David L. Gunn is the Head Librarian at Hunton & Williams LLP, a
law firm representing NTP. (Gunn Declaration, ¶ 1).
On 3 February 2006, Gunn called Birgit Storleer at NTNU to see if he
(the firm) could borrow the eight documents. Presumably, Storleer is the
same individual mentioned in the Pasquine declaration. Storleer is said to
have "readily assented" to Gunn's request. (Gunn Declaration, ¶ 2).
Gunn received the documents "in good order" via DHL on 7 February
2006. (Gunn Declaration, ¶ 3).
On 7 February 2006, Gunn gave the documents to Tom Kaufmann
and, as of 24 April 2006, has not again seen the documents. (Gunn
Declaration, ¶ 4).
Gunn tells us that while the documents were in his possession, he did
not "alter" or "manipulate" the documents. (Gunn Declaration, ¶ 5).
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The term "manipulate" is susceptible to different meanings. A first
meaning would include turning pages—a permissible manipulation. A
second meaning would include changing the contents of the pages in some
fashion—an impermissible manipulation. We believe Gunn (as well as other
NTP witnesses) in using the term "manipulate" refers to the second meaning.
Declaration of Thomas F. Kaufman
Thomas F. Kaufman is an attorney in the law firm of Hunton &
Williams LLP. (Kaufman Declaration, ¶ 1).
On 7 February 2006, Kaufman received the eight documents from
Gunn. (Kaufman Declaration, ¶ 2).
Kaufman examined the documents "to get a sense of what they
contained," but he "did not alter or manipulate the … documents while they
were in [his] possession." (Kaufman Declaration, ¶ 3).
On 22 February 2006, Kaufman caused the documents to be shipped
via DHL to James Brown, "a solicitor in our London office." (Kaufman
Declaration, ¶ 4).
Declaration of James Brown
To alert the reader, we note that NTP relies on both (1) a Brown
Declaration and (2) a Browne Declaration.
James Brown is an English "solicitor" in the London Office of Hunton
& Williams LLP. (Brown Declaration, ¶ 1).
Brown received the documents from Kaufman on 27 February 2006.
(Brown Declaration, ¶ 2). What Brown means is that he received via DHL
the eight documents which Kaufman says he sent to London via DHL.
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On 2 March 2006, Brown instructed paralegal Peter Adler to hand-
deliver the documents to David Richard Browne. (Brown Declaration, ¶ 3).
Brown did not alter the documents while they were in his possession.
(Brown Declaration, ¶ 4).
Declaration of Peter Sadler
Peter Sadler is a paralegal in the London Office of Hunton &
Williams LLP. (Sadler Declaration, ¶ 1).
On 2 March 2006, he received the eight documents from James
Brown. (Sadler Declaration, ¶ 2).
Sadler then hand delivered the eight documents to David Richard
Browne. (Sadler, Declaration, ¶ 3).
Sadler did not alter or manipulate the documents while they were in
his possession. (Sadler Declaration, ¶ 4).
Declaration of David Richard Browne
Browne is a citizen of the United Kingdom working in London.
(Browne Declaration, ¶ 1).
Browne is a forensic document investigator. (Browne Declaration,
¶¶ 3-6 and Exhibit 1 attached to the declaration).
Browne has performed forensic investigation in both criminal and
civil matters. (Browne declaration, Exhibit 1, page 1, 4th full paragraph).
Browne "took possession" of the eight documents on 2 March 2006.
(Browne Declaration, ¶ 8.)8

8 The Examiner calls into question the relevance of the Browne examination
and whether it should be considered at all. (Answer 96 n.19). We note that
the Examiner sometimes refers to Browne as "Brown." We have not found
in NTP's Reply Brief any response to the Examiner's point. The Browne
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He had been asked by David Geneson of Hunton & Williams LLP to
"examine" the documents. (Browne Declaration, ¶ 7).
What did Browne learn from his examination?
1. Reference C1 is said to have been fastened with staples. (Browne
Declaration, ¶ 14). According to Browne, staple holes in the document were
"commensurate [sic—consistent] with three staples having been present and
[at one point thereafter] having been removed." Id. Further examination has
lead Browne to conclude that it is "possible" that Reference C1 was taken
apart and then put back together, but Browne states [one might say
"speculates"] that the papers may have been put back together in an order
differing from the original order. (See, e.g., Browne Declaration, ¶ 22).
Browne says that it is not possible to state when the documents were
dismantled (unstapled) and reassembled. (Browne Declaration, ¶ 24).
2. Using UV light analysis, Browne concludes that a number of pages
within each document, which he calls "books," "were [made on
photocopiers] from different batches of paper." (Browne Declaration, ¶ 27).
3. Finding what Browne calls a disparity between some "headers" and
the rest of the text on the page of Reference C2, Browne indicates "that the
original text on the page has been replaced in each case." (Browne
Declaration, ¶ 32).
4. Browne says that the header line of Reference C3 was produced at
a different time than the material on the rest of the page. He also notes a

examination is questionable for the reasons given by the Examiner.
However, assuming arguendo the Examiner is not correct, we proceed with
fact-finding and analysis assuming the examination occurred with a proper
set of documents.
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shift in how pages are numbered. After page 107, the page numbers move
from the outside of each page to the inside. (Browne Declaration, ¶ 33).
More on the page number "shift" appears later in this opinion.
5. According to Browne, References C3, C4 and C5 were all
produced by a photocopier on the same day. The three references do not
have the "same trash mark." (Browne Declaration, ¶ 35). Browne cannot
explain why the three documents, all made via a photocopier, have different
trash marks. (Id at ¶ 36).
6. Reference C5 has pages which appear to have been made on
different paper. (Browne Declaration, ¶ 37).
7. Reference C6 has pages which are reproduced on different paper.
(Browne Declaration, ¶ 38).
8. The same is said to be true for Reference C8. Not only does
Browne conclude that it was made on different paper, but "probably at
different times." (Browne Declaration, ¶ 39).
9. Browne finds it difficult to explain why the first half of Reference
C8 is on paper that is the same as used for the next book (Reference C7)
while the second half of Reference C8 uses the same paper as five other
books. (Browne Declaration, ¶ 41).
10. Browne next addresses date stamps on the front page of each
document. Since pages can be removed and replaced, Browne reasons that
one cannot "guarantee" the accuracy of the dates stamped on the front pages.
(Browne Declaration, ¶ 44).
11. Browne states that "[i]t is clear that much of the text has been
added to existing pages." (Browne Declaration, ¶ 45). Browne does not
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identify to our satisfaction specifically what “text” is said to have been
added. The apparent basis for the statement is that the "re-use of existing
headers to introduce the current text." (Id.)
12. "Although many of the books purport to have been produced at
the same time, there is [says Browne] considerable evidence that this is not
the case." (Browne Declaration, ¶ 47). Presumably the basis for this
statement is the result of the overall findings of the examination, all as
discussed above.
13. Browne concludes his declaration as follows (Browne
Declaration, ¶¶ 49-50):
49. Without knowledge of other documents in the
University [L]ibrary and or the Telecommunications Research
Institute and the control procedure in use, or the copiers in use,
it is not possible to give a definite opinion as to the dates of any
alterations.
50. However, my findings are significant and do cast
doubt as to when these documents were created, when changes
were made and what text was actually on the pages when they
were first filed [in the Library].
Supplemental Declaration of V. Thomas Rhyne
NTP takes the position that one skilled in the art could not have found
the eight documents because they are said to have been improperly indexed,
i.e., the "right" technical terms do not appear on the catalogue index. In
support of its position, NTP relies on the declaration testimony of
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V. Thomas Rhyne. The relevant testimony appears in ¶¶ 47-52 on
pages 15-17 of the Supplemental Declaration of V. Thomas Rhyne.
According to Rhyne, one skilled in the art would not have located the
eight documents through a reasonable search. (Rhyne Supplemental
Declaration, ¶ 47).
When asked by NTP to give his opinion, Rhyne was told to base his
opinion on nine (9) assumptions which Rhyne identifies in subparagraphs a.
through i. of ¶ 48 of the Supplemental Declaration. We paraphrase the
assumptions as follows—using words in place of those used by Rhyne for
which there is an antecedent in this opinion.
Assumption a: That the eight documents consist of a first
document dated April 1986 ("the 1986 Document [Reference C1]) and
a second group of documents dated in 1989 (the "1989 Documents"
[References C2 through C8]) (collectively "the Norwegian
Documents).
Assumption b: That the documents were deposited at the
Norwegian University of Science and Technology ("NTNU") in
Trondheim, Norway as RIM has alleged.
Assumption c: That the documents were entered into the
BIBSYS system, a computer system used by NTNU and other
Norwegian libraries prior to the relevant priority date of the Campana
patents involved in these reexamination proceedings.
Assumption d: That Reference C1 is entitled "Mobile Data
Network System Description," Norwegian Telecommunications
Administration Research Department, Report No. 30/86, and that the
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cover page, indicates a date of April 1986 and lists the following
authors: Terje Henriksen, Stig Kaspersen, Geir Thorud and Finn
Trosby.
Assumption e: That currently, i.e., 25 January 2006, the date
on which Rhyne appears to have signed the Supplemental Declaration,
the BIBSYS entry for Reference C1 lists only the first author, the title,
and the following subject matter in Norwegian: datamaskinnett,
dataoverforing, and mobiltelefon where these Norwegian terms are
translated, respectively, as: computer network, data transmission, and
mobile telephone.
Assumption f: That the BIBSYS system currently allows a user
to enter keywords to electronically search the BIBSYS records,
including the use of author, title, and subject matter categories.
Assumption g: That References C2 through C8 consist of an
eight-volume set [with Volume 5 appearing to be unavailable], each
volume entitled "TF Teledirektoratets forskningsavdeling, Mobile
Data Network Description," and that the cover page of each volume is
date stamped either February 22, 1989 or April 24, 1989.
Assumption h: That the BIBSYS entry for each of References
C2 through C8 currently lists the first author, the title and volume
title, and one or both of the following subject matter categories in
Norwegian: datamaskinnett and kommunikasjonsprotokoller where
these Norwegian terms are translated, respectively, as : computer
network and communications protocol.
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Assumption i: That in 1989-91, the BIBSYS system was
available for use only one of four universities in Norway and was not
connected to any outside networks for use from anywhere else.

According to Rhyne, the "field of the invention of the Campana
patents is [limited to] electronic mail communication systems." (Rhyne
Supplemental Declaration, ¶ 49).
Rhyne goes on to testify that "one of ordinary skill in the art would be
a person focused on the technology of electronic mail communications
systems." (Id. (emphasis added)).
In his opinion, one of ordinary skill in the art in researching the field
"would have searched for relevant materials using terms such as 'electronic
mail,' 'email,' electronic message," and similar terms." (Rhyne
Supplemental Declaration, ¶ 50 (emphasis added)).
Assuming, says Rhyne, that a person would have been motivated to
fly to Norway to use the BIBSYS computer system at one of the four
Norwegian libraries, the person would have used those search strategies [i.e.,
using the terms set out in ¶ 50], but would not have located any of the eight
documents. (Id.)
Based on his underlying assumptions and opinions, Rhyne concludes
that one skilled in the art would not have located the eight documents
"exercising reasonable diligence." (Rhyne Supplemental Declaration, ¶ 52).
The problem facing the NTP inventors
Rhyne's focus on the "field of the invention" is too narrow.
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The field of the invention is broader than Rhyne would have us
believe. For example, with reference to Campana U.S. Patent 5,438,611, the
following becomes manifest (col. 3:60 through col. 4:51) (emphasis added):
As personal computers are used more frequently by
business travellers, the problem of electronic mail delivery
becomes considerably more difficult. A business traveller
carrying a portable PC has great difficulty in finding a
telephone jack to connect the PC to fetch electronic mail from
either a host computer or a gateway switch. Connections for a
PC's modem are difficult to find in airports and with the advent
of digital PABX's in businesses the telephone connectors are
incompatible with a PC's analog modem. Hotels and motels
oftentimes have internal PABX's that prevent calls from
automatically being placed by the user's PC to electronic mail
gateway switches to retrieve information. Most portable PC
modems will only operate correctly when connected to a true
outside telephone line that has telephone battery voltages and
dial tone available to permit the number to be dialed direct.
The inability to find an appropriate connection to connect the
PC modem when travelling has contributed to the degradation
of electronic mail reception when the recipient is travelling.
When travelling internationally, this problem is further
compounded by the fact that most electronic mail gateway
mailboxes require a 1-800 toll free number to be dialed in order
to connect the mailbox. Almost all 1-800 telephone numbers
are available for continental use only and cannot be accessed
from a foreign country.
Industry trends make it increasingly difficult to receive
electronic mail. When PC's were exclusively considered an
office or desktop machine, it was less difficult to deliver
electronic mail. Advances in the state of the art in
microelectronics have permitted PC's to be downsized to very
lightweight portable (notebook), and notebook size computers.
These portable units have the computing and storage power of
the former desktop units and have lent themselves to the trend
that they now become very portable in their utilization. They
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are small enough that they can easily fit into an attache case
and/or a suit pocket. The net result is that the portable unit no
longer resides in the office or the desktop. The portable unit
now may be taken home at night, as well as on travel with the
user, such as for business travel. Increased portability of PC's
further aggravates the problem of automatic electronic mail
delivery as a consequence of portability eliminating the wired
communication paths which have been typically used in state of
the art electronic mail systems. The electronic mail industry is
currently experiencing a rapid growth rate.
Numerous communication companies are offering forms
of electronic mail services. However, a problem arises that
users of one electronic mail system currently cannot send
electronic mail to a subscriber of another electronic mail system
(e.g., AT&T E-mail to Sprint Mail, etc.). Numerous attempts
are currently underway in the industry to solve this problem.
Current attempts are the utilization of common protocols
between electronic mail systems (e.g. X.400). However, the
proposed system does not resolve the problems resultant from
portability and travelling situations described above.

NTP's description of the background of the invention as set out above
reveals that the subject matter to be researched or investigated is not limited
to email. While it is true that email systems are relevant, no less relevant is
wireless communication—or, to use the words of Sorsdahl: "mobile data
networks" and "mobile telephony." (Sorsdahl Declaration, ¶ 7).
Because the problem as described by NTP is the elimination of wired
communication paths previously relied on for sending email to people with
a portable device, wireless communication of data is a technical field just as
important, if not more, than email systems and messages, in the context of
NTP’s invention.
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Rhyne does not explain precisely what he means by "focused" (does it
mean solely focused or just principally focused?) and "similar terms" (such
as?). (Rhyne Supplemental Declaration, ¶¶ 49, line 5 and ¶ 50, line 53).
To the extent there is a conflict in the testimony of Rhyne on the one
hand and Sorsdahl on the other hand as to the field of the invention, we
credit the testimony of Sorsdahl over that of Rhyne. The Sorsdahl
testimony is more consistent with the problem of sending and receiving
email by wireless communication.
Review of "original" documents
The Board has reviewed two sets of what we will refer to as "original
documents."
1. First set of "original" documents
The first set of documents consists of (1) seven of the eight documents
filed by the third-party requester [References C2 through C7] and (2) the
Browne declaration as filed by NTP.
The "official record" of the reexamination proceedings before us is
contained in what the USPTO calls its IFW (image file wrapper). See
Notification of United States Patent and Trademark Office Patent
Application Records being Stored and Processed in Electronic Form, 1271
Off. Gaz. Pat. & Tm Office 100 (June 17, 2003).
We elected to retrieve from USPTO archives the paper form of the
seven documents and the Browne declaration as filed in the USPTO and
have inspected the documents.

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2. Observations on first set of "original" documents
a. Browne declaration
We find nothing we need to discuss with respect to the "original"
Browne declaration filed by the requester with the USPTO.
Instead, we refer the reader to our discussion of the copy of the
Browne declaration filed by NTP in response to our request for production
of documents.
b. Seven of the eight "original" documents
as filed by the requester

References C2 through C8 have been reviewed.
As filed by the third-party requester, each document was bound on the
left side with plastic binder probably using a Velo® binder machine. The
plastic Velo® binder has been removed, probably so that the USPTO could
scan the documents into the Image File Wrapper (IFW) system. We do not
know what happened to the plastic binder. Each of the documents has 11
small holes approximately ⅛ inch in diameter along the left side of each
page.
Unlike the original Library documents examined by Browne, each of
the third-party filed copies of References C2 through C7 contain on the
upper-left hand corner of the cover page the following "stamp" (matter in
italics is hand-written):
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True Copy Certified
Royal Norwegian Embassy
Washington, D.C., 07 22 2005
B Ve Magnusson
Brita Ve Magnusson
Vice Counsul
Further observations concerning References C1 through C8 appear
below in connection with our discussion of the "original" eight documents.
3. The second set of "original" documents
In order to better evaluate the Browne declaration, the Board
determined that it wanted to review the "original" eight documents which
were examined by Browne.
Accordingly, the Board ordered NTP to produce the "original"
documents which were examined by Browne. See Order—37 C.F.R.
§ 41.50(d) (Request for production of original documents), entered
22 October 2008.
The Board also asked for a clear copy of the Browne declaration since
portions of some Exhibits in the USPTO copy of the declaration in IFW are
not clear.
A clear copy of the Browne declaration and the "original" eight
documents were produced and filed with the Board on 23 October 2008.
We were told at oral hearing that, despite inquiries from the Library
asking that the documents be returned, the eight documents have been in the
possession of counsel for NTP between (1) the time of Browne's
examination and (2) their being filed with the Board. Hearing Transcript,
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29:27-30:9. NTP asks that the documents be returned "so that we may
return them to the [L]ibrary in Norway from which they were obtained."
Letter dated 23 October 2008 from Brian M. Buroker, Esq., to Supervisory
Trial Clerk Maria Vignone, page 2.
We will assume that the documents produced by NTP on 23 October
2008 are in essentially the same condition as they were when examined by
Browne.
4. Observations on the documents produced by NTP
a. The Browne declaration
(1)
In ¶ 10 on page 3 of a report (Exhibit 2) accompanying the Browne
declaration, Browne states:
I noted there were slight abrasions on the paper within
the pair of old staple holes at the top of page 7-1 [of Reference
C1]. Similar scratches can be seen within the pair of old staples
holes at the bottom (See pictures below). These marks are clear
signs that an implement was used to remove staples from the
page/s.
There follows a "picture". In the IFW record, the "picture" is not
clear. However, Exhibit 3 attached to the "original" Browne report is clear.
It shows holes and marks on the top and bottom of page 7-1. A copy of
what appears in Exhibit 3 is set out below. See also (069).
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(2)
Browne observed a difference between the "header" on pages of
Reference C2 (Report 3/89) and the remaining text on those pages. (See
Exhibit 2, ¶ 24 on page 4 of the Browne report accompanying the Browne
Declaration).
A copy of part of page 1 of Reference C2 (TF-Report 3/89) is
reproduced below.

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The difference between the header "Volume 1: Network Architecture,
Addressing and Routing" and the remaining text on page 1 "1. Introduction
… Figure 1." is apparent.
(3)
The pages of Reference C4 (TF-Report 5/89) have what is known as a
"trash mark" on each page. Trash marks can appear on documents
reproduced on a photocopier. The trash mark on Reference C4 is
approximately 4-⅝ inches from the top of each page and approximately ⅞
inches from the right side of the page (070-071) . A similar trash mark
appears on all the pages of Reference C4. Browne explains the trash marks
at ¶ 26 on page 5 of his report.
In ¶¶ 27-28, Browne then states:
27. According to the TF front sheet [i.e., the third page]
it [i.e., Reference C4,] was produced on the same date—6/2/89
[i.e., "Dato" 800206]—as the other two documents [i.e.,
References C2 (TF-Report 3/89) and C3 (FT-Report 4/89)].
They [i.e., References C2 and C3] do not have the same trash
mark.
28. I cannot explain how three documents, allegedly
produced on the same date, using the same paper and all by
photocopier, do not produce the same trash marks.
(4)
In ¶¶ 31-33 of his report, Browne has the following to say about
References C8 (TF-Report 8/89) and C9 (TF-Report 9/89).
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31. Document 8/89, Volume 8, was also produced on
6/2/89. It does not have the trash marks seen in 5/89, Volume 3
[Reference C4]. It does have the same problems with the
header throughout, in that the contents of each page were
copied onto a page already bearing the header. Pages up to
page 14 are loose, having become detached from the binding
strip. I note that the pages from page 83 to the end are
produced on similar paper [that] was used for the bulk of the
previous books—3/89, Volume 1 to 7/89, Volume 6
[References C2 through C7]. However, the first pages, i.e., up
to page 82 are significantly lighter under UV (see picture
above—comparing pages 82 with 83. The difference between
the papers can also be seen in normal lighting. This book [i.e.,
Reference C9] has clearly been produced on two separate
papers and probably at different times.
[A clear copy of the "picture above" mentioned in ¶ 31 is
a rectangle divided in half. See Exhibit 6 attached to the
Browne report. The left half is a UV of page 82 and the
right half is a UV of page 83. The left half is a lighter
blue than the right half and there is a visible contrast
between the two blues. Part of the right half appears to
be almost purple (072).]
32. Document 9/89, Volume 7 [Reference C8], has the
same header problems mentioned above. The whole document
has been produced on the lighter paper used for the first half of
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8/89, Volume 8 [Reference C9]. This document [Reference
C8] was produced on 15/2/89 [see the third page—"Dato"
890215]. "15/2/89" means 15 February 1989. The picture
shows the comparison of pages 14 of 9/89, Volume 7 with 3/89,
Volume 1.
[A clear copy of the "picture" mentioned in ¶ 32 is a
rectangle divided in half. See Exhibit 7 attached to the
Browne report. The left half is a UV of a page from 3/89
(073) and the right half is a UV of a page from 9/89
(073). The caption below the picture is "UV reaction of
the paper in 3/89 compared with that in 9/89." The left
half is dark, almost black in color. The right half is dark
blue at the top and dark purple at the bottom. There is a
visible contrast between the left and right sides.]
33. What is difficult to explain is why the first half of
book 8/89 [Reference C9], Volume 8, is on paper that is the
same as that used for the next book in the series (produced
some days later) while the second half uses the same paper as
the previous 5 books. It should be borne in mind that the TF
sheet [i.e., the third page in each book including the cover
page,] giving the date of production is produced on paper that
was used on 15/2/89—even though the date shown is 6/2/89,
the same as the previous dates.

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b. The original Library material—the eight documents
(1) Reference C1
Reference C1 contains paper pages which were at one time bound
with (1) a plastic front cover and (2) a light blue back paper (004 and 005)
which extends around to the front covering about 1 inch of the left front
cover. There is some damage to the upper portion of the spine (052). The
light blue paper is the kind one often sees in legal documents, like wills.
The document appears to have been held together with three staples. The
staples in Reference C1 as received by Browne were removed by Browne
and have been preserved (007). (Browne Declaration, Exhibit 2, page 2, ¶
7). The document is about ⅜ inches thick.
The authors are identified as:
Targe Henriksen
Stig Kaspersen
Geir Thorud
Finn Trosby
At the top left corner of the first paper page, the following
handwritten notation appears: 621.39(06)tqR18 (066).
A date stamp (made with an ink date stamp) appears half way down
the page on the right side (067):
Norges tekniske
23 MAI 1986
universitetsbibliotek
Browne testified that he could not vouch for the authenticity of the
date stamp of Reference C1 or of References C2 through C8. (Browne
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Declaration, ¶¶ 42-43). We have no basis to question the authenticity of the
dates stamped on References C1 through C8.
In the lower right hand corner of the first paper page, perforated holes
which spell out (011):
N.T.H.
Bibliotek
On the back side of the first paper page there is a bar code with the
number 86a008658 (068).
(2) Reference C2
Reference C2 (TF-Report 3/89—Volume 1) (008) contains paper
pages bound with a dark blue cloth binder (009). Browne refers to the
bound pages being "'Perfect' bound" and he describes certain advantages of a
Perfect binding system. (Browne Declaration, ¶ 25, line 2 and ¶ 26). The
document is about ⅛ inches thick.
The authors are identified as:
Stig Kaspersen
John Reidar Rørnes
Geir Ivar Thorud
Finn Trosby
At the top left corner of the cover page, the following handwritten
notation appears: 621.39(06)tqR18 (010).
A date stamp (made with an ink date stamp) appears half way down
the page on the left side (009):
Norges tekniske
22 FEB. 1989
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universitetsbibliotek
In the lower right hand corner of the first paper page, perforated
holes—similar to those on Reference C1—spell out (013):
N.T.H.
Bibliotek
On the back side of the first paper page there is a bar code with the
number 89a012956 (012).
(3) Reference C3
Reference C3 (TF-Report 4/89—Volume 2) (050) contains paper
pages bound with a dark blue cloth binder (050). The document is about
5/16 inches thick.
The authors are identified as:
Stig Kaspersen
Geir Ivar Thorud
Finn Trosby
At the top left corner of the cover page, the following handwritten
notation appears: 621.39(06)tqR18 (050, upper left-hand corner) .
A date stamp (made with an ink date stamp) appears half way down
the page on the left side (050):
Norges tekniske
22 FEB. 1989
universitetsbibliotek
In the lower right hand corner of the first paper page, perforated
holes—similar to those on Reference C1—spell out (015):
N.T.H.
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Bibliotek
On the back side of the first paper page there is a bar code with the
number 89a012955 (016).
Browne observed the following (Browne Declaration, ¶ 33):
I note that the page numbering [of Reference C3]
changed for the annex, i.e. after page 107. The numbers move
from the outside of the page to the inside [see (074 and 075)].
Review of the original document confirms Browne's observations.
However, there is more to the story.
Reference C3 consists of (1) a cover (050), (2) four pages of
introductory material, e.g., table of contents, (3) pages 1 through 107 of
descriptive text (with page numbers on the outside of each page (074)),
(4) Annex 1 [Data Tables with MDX] with pages 1-2 numbered on the
inside of the page (075), (5) Annex 2 [Description of procedures in MDX
and MS] with pages 1-17 numbered on the inside, and (6) a back cover. An
Annex in the context of the document is what normally we would call
appendix—such as Appendix 1 to this opinion listing photographs. Nothing
about the page numbering strikes us as being unusual.
(4) Reference C4
Reference C4 (TF-Report 5/89—Volume 3) (018) contains paper
pages bound with a dark blue cloth binder (017). The document is about
5/16 inches thick.
The authors are identified as:
Geir Ivar Thorud
Finn Trosby
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At the top left corner of the cover page, the following handwritten
notation appears: 621.39(06)tqR18 (021).
A date stamp (made with an ink date stamp) appears half way down
the page on the left side (022):
Norges tekniske
24 APR. 1989
universitetsbibliotek
In the lower right hand corner of the first paper page, perforated
holes—similar to those on Reference C1—spell out (019):
N.T.H.
Bibliotek
On the back side of the first paper page there is a bar code with the
number 89a012954 (020).
As earlier mentioned in this opinion, Browne discussed a "trash" mark
on the pages of Reference C4. Browne Declaration, Exhibit 2, page 5, ¶ 26.
We have been able to confirm that the "trash" mark is present on the pages
of the document (070 and 071—note black dot where pencil points).
(5) Reference C5
Reference C5 (TF-Report 6/89—Volume 4) (023) contains paper
pages bound with a dark blue cloth binder (024). The document is about ¼
inches thick.
The authors are identified as:
Geir Ivar Thorud
Finn Trosby
Trond Harald Wettre
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At the top left corner of the cover page, the following handwritten
notation appears on a piece of cloth attached to the cover: 621.39(06)tqR18
(024).9
A date stamp (made with an ink date stamp) appears half way down
the page on the left side (076):
Norges tekniske
22 FEB. 1989
universitetsbibliotek
In the lower right hand corner of the first paper page, perforated
holes—similar to those on Reference C1—spell out (025):
N.T.H.
Bibliotek
On the back side of the first paper page there is a bar code with the
number 89a012953 (026).
(6) Reference C6
Reference C6 (TF-Report 7/89—Volume 6) (028) contains paper
pages bound with a dark blue cloth binder (030). The document is about ⅛
inches thick.
The authors are identified as:
Stig Kaspersen
Geir Ivar Thorud
Finn Trosby

9 On the cover, a handwritten "Anal" appears on cloth attached to the cover.
While in our possession, the cloth with "Anal" came loose. We have
reattached the cloth using Scotch TM tape.
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At the top left corner of the cover page, the following handwritten
notation appears on a piece of cloth attached to the cover: 621.39(06)tqR18
(030).
A date stamp (made with an ink date stamp) appears half way down
the page on the left side (029):
Norges tekniske
22 FEB. 1989
universitetsbibliotek
Unlike any of the other documents, a second date stamp appears half
way down the page on the right side (029):
RECEIVED
JUN 23, 2005
NOVAK DRUCE--DC
In the lower right hand corner of the first paper page, perforated
holes—similar to those on Reference C1—spell out (032):
N.T.H.
Bibliotek
On the back side of the first paper page there is a bar code with the
number 89a012951 (031).
(7) Reference C7
Reference C7 (TF-Report 9/89—Volume 7) (033) contains paper
pages bound with a dark blue cloth binder (035). The document is a little
less than ⅛ inches thick.
The authors are identified as:
Stig Kaspersen
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Geir Ivar Thorud
Finn Trosby
At the top left corner of the cover page, the following handwritten
notation appears on a piece of cloth attached to the cover: 621.39(06)tqR18
(035).
A date stamp (made with an ink date stamp) appears half way down
the page on the left side (034):
Norges tekniske
24 APR.1989
universitetsbibliotek
In the lower right hand corner of the first paper page, perforated
holes—similar to those on Reference C1—spell out (036):
N.T.H.
Bibliotek
On the back side of the first paper page there is a bar code with the
number 89a012947 (037).
(8) Reference C8
Reference C8 (TF-Report 8/89—Volume 8) (040) contains paper
pages bound with a cloth binder (041). The document is about 5/16 inches
thick.
The authors are identified as:
Geir Ivar Thorud
Finn Trosby
Trond Harald Wettre
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At the top left corner of the cover page, the following handwritten
notation appears: 621.39(06)tqR18 (041; 049).
A date stamp (made with an ink date stamp) appears half way down
the page on the left side (039):
Norges tekniske
24 APR.1989
universitetsbibliotek
Over the stamped date, written in blue ball-point pen, appears (039)
24 April 89
In the lower right hand corner of the first paper page, perforated
holes—similar to those on Reference C1—spell out (042):
N.T.H.
Bibliotek
On the back side of the first paper page there is a bar code with the
number 89a012949 (059).
The first fourteen (14) pages of the document have come loose from
the binder (043, 044). Browne also found that the first fourteen (14) pages
had come loose. (Browne Declaration, ¶ 39, lines 3-4).
(9) Other observations
Facially, all eight documents appear to be "normal." To our untrained
eye, the documents do not appear to have been altered or manipulated (in an
inappropriate manner).
When all documents are placed side by side, a photo from the spine
reveals some red ink marks (052). We do not know the significance of those
red ink marks.
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Miscellaneous findings
Browne states that he did not go to the Library in connection with his
examination of the eight documents. Browne, therefore, cannot state
whether similar documents in the Library collection have similar
characteristics.
NTP and those associated with NTP (e.g., counsel, Browne) made no
attempt to locate or contact the authors of the eight documents. (Hearing
Transcript, 24:21-25:26). Likewise, there is no indication on the record that
the third-party requester contacted the authors. These authors would be
expected to have no interest in patent issues between NTP and RIM.
Further, these authors might have been able to shed some light on the
differences, if any, between the documents they prepared in 1986 and 1989
and the documents examined by Browne. NTP and RIM made a "litigation"
decision not to find the authors; both now live with that "litigation" decision.
In its Reply Brief, page 14, NTP states that the documents "were
obtained by the third party requester, RIM, and therefore [are] of dubious
authenticity or reliability." There is no basis to assume that the documents
are "dubious" because they were presented by RIM. An inference that a
third-party was "up to no good" in presenting a document has no place in a
reexamination proceeding unless the patent owner has proof that something
inappropriate occurred.
4. Discussion
(1) Authenticity
(a) A prior art document relied upon to (1) defeat a patent applicant
during examination under 35 U.S.C. § 132, (2) defeat a patent owner during
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reexamination and (3) have a court declare a patent invalid in a civil action
for patent infringement should be "authentic." Before the USPTO, the
proponent of a prior art document must initially establish the prima facie
authenticity of the document. The standard of proof is preponderance of the
evidence—meaning the document is more likely authentic than not.
Concrete Pipe & Prods of Cal., Inc. v. Constr. Laborers Pension Trust for S.
Cal., 508 U.S. 602, 622 (1993).
Once a prima facie case of authenticity is established by a
preponderance of the evidence, the patent owner in a reexamination may
come forward with evidence to establish a lack of authenticity.
We then evaluate all the evidence and determine whether the
Examiner erred in finding the documents to be authentic.
Unlike a civil action in district court or an interference before this
Board, the Federal Rules of Evidence do not control the admissibility of
evidence. Hearsay evidence is "admissible" and may be considered. In re
Epstein, 32 F.3d 1559, 1565 (Fed. Cir. 1994). Likewise, third-party
statements, such as statements in the Pasquine and Sorsdahl declarations and
the Digernes letter, may be "admissible." In re Reuter, 670 F.2d 1015,
1020-21 (CCPA 1981).
However, mere uncorroborated hearsay or rumor is not sufficient to
establish a fact. Consol. Edison Co. of NY v. NLRB, 305 U.S. 197, 229-30
(1938). The weight to be accorded any evidence, including hearsay
evidence, presented in an ex parte reexamination proceeding is a matter we
determine through the exercise of sound discretion. In re Am. Acad. Of Sci.
Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (Board has broad
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discretion to determine weight to be given evidence, including declaration
evidence); J.C. Equip. Corp. v. England, 360 F.3d 1311, 1315 (Fed. Cir.
2004) (the trier of fact's responsibility is to determine the weight (if any) to
be given all the evidence, whatever its character).
(b)
A third-party requester filed copies of References C1 through C8 as
part of an ex parte request for reexamination in another patent
reexamination. The documents appear regular on their face. The Digernes
letter outlines the procedure for receiving, cataloguing and shelving
documents. The Digernes letter is countersigned by Ingar Lomheim, the
Library Director. As we noted earlier, the Library does not have a dog in the
fight between NTP and RIM—in fact we view the Library as a neutral
observer doing its best to communicate to NTP and RIM (and ultimately us)
how the Library functions. The procedure set out in the Digernes letters is
consistent with a review of the "original" documents.
For example, the Digernes letter says one step in the receipt to
shelving process is to date stamp receipt of the document. We find a date
stamp on References C1 to C8. We have absolutely no reason to question
the accuracy of those date stamps. Just as employees of the Government of
the United States government are presumed to have done their job correctly,
on the record before us, we see no reason to apply a different standard to
employees of the Government of Norway.
Another example is the presence of the "621.39(06)tqR18" and "Anal"
hand-written notes on the cover of each document. The Library Director
tells us the Library makes the hand-written notations before shelving and we
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have absolutely every reason to believe the handwritten notes were placed
on the documents exactly as the Library Director says they were.
The procedure followed in this case, i.e., obtaining a letter from the
Library, is consistent with the procedure followed by the USPTO in other
cases when receipt, cataloguing and shelving issues arise in connection with
a reference, e.g., a thesis in a university library. We do not take live
testimony in an ex parte reexamination. Accordingly, neither the third-party
requester nor the patent owner could "call" the Library Director. The
Digernes letter is the best the third-part requester, the patent owner and the
USPTO could expect. While "hearsay" in the strictest sense, it is consistent
with the physical evidence and we accord the letter considerable weight.
That being the case, we have no basis for holding that the Examiner erred in
finding, prima facie, that the eight documents are authentic.
In its Reply Brief, NTP argues that more weight should be given to
the "sworn" testimony of its witnesses vis-à-vis the unsworn testimony of
officials of the Library. We disagree. While the NTP witnesses and the
third-party requester's witnesses may be characterized as interest witness, the
officials of the Library have no interest in the matter before us. There is no
reason to doubt their "unsworn" testimony given how consistent it is with
the physical evidence.
NTP also makes much of the fact that a Library official was not
willing to give a "sworn" statement when asked by RIM. (Reply Brief 15).
NTP has not told us whether it asked for the same "sworn" statement. In any
event, the complications of litigation in the United States are well-known
and we would go as far as to sympathize with an employee of a Norwegian
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library not wanting to provide an American lawyer with a "sworn" statement
prior to consultation with legal counsel for the Library.
(c)
NTP hired Browne—a forensic document examiner—to look into the
documents. Browne found various characteristics of the documents which
seem to give him pause. We do not share Browne's concerns. While we
need not address all of Browne's concerns, we will discuss a few. In
discussing the concerns, we keep in mind that we are not dealing with a
criminal law standard of proof (beyond a reasonable doubt). Instead we are
dealing with a "civil" matter where the standard of proof is preponderance of
the evidence.
To establish a fact by a preponderance of the evidence it must be
shown that the fact is more likely true than not. A fact cannot be established
by a preponderance based on "possibilities." Rather, it must be established
based on "probabilities." The difference is significant. Rapoport v. Dement,
254 F.3d 1053, 1063 (Fed. Cir. 2001) (inherency, a question of fact, cannot
be established by a preponderance of the evidence based on evidence that a
certain thing may result from a given set of circumstances); In re Robertson,
169 F.3d at 745 (inherency cannot be established by the mere fact that a
certain thing may result from a given set of circumstances); Hansgirg v.
Kemmer, 102 F.2d 212, 214 (CCPA 1939) (inherency may not be
established by probabilities or possibilities; the mere fact that a certain thing
may result from a given set of circumstances is not sufficient); Central State
Hospital v. Wiggers, 230 Va. 157, 159 (1985) (possibilities, conjecture and
speculation are not sufficient to establish something by a preponderance of
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the evidence); Scripps Research Institute v. Nemerson, 72 USPQ2d 1122,
1125 (Bd. Pat. App. & Int. 2004) (possibilities do not amount to a
preponderance of the evidence).
Browne with commendable candor concedes, as he must, that there is
significant "factual" information he does not know. Browne declaration,
¶ 49—knowledge of other documents in the Library.
Throughout his testimony, Browne seems to assume that one
Reference document was "photocopied" at the same time another Reference
document was "photocopied." The assumption seems to be based on the
date stamp placed on the document by the Library or the date the Library
says it received the document. However, there is no credible evidence
which establishes that a photocopy date was or is a function of a receipt date.
Browne also has pause about certain References because they are
printed on different paper, i.e., they were "photocopied" on different paper.
From this fact, Browne and NTP invite us to find that there was some
inappropriate alteration of the documents at some unknown time. We
decline the invitation. First, a plausible possibility (not a probability) is that
after photocopying the authors or their "secretaries" were not satisfied with
the "results" of certain pages and therefore they "re-photocopied" those
pages so that a "good looking" document would be filed with the Library.
Second, pages may have been substituted during the proofreading step
between receipt and shelving at the Library. Third, Browne concedes that if
there was an alteration, he does not know when it occurred. NTP essentially
wants us to figure out that there was an inappropriate alteration by
"someone," yet NTP fails to identify any "someone" who would have had a
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motive to engage in inappropriate alterations. NTP, without any real basis,
wants us to believe someone did something they were not supposed to do.
On the record before us, it appears all involved did what they were supposed
to do and did it in an honest manner.
Browne has a concern with the header on pages of some documents
vis-à-vis the text on the same page. Browne reasons that "photocopies" may
have been made using paper which already had the header. Browne does not
testify whether copying of documents on paper with a header was unusual at
the time the documents were prepared. Rather, Browne "speculates" in this
case that "something may not be right."
The patent owner made no attempt to locate the authors. Hearing
Transcript, 24:24-25:8. Much of the speculation and possibilities might
have been clarified had one or more of the authors been contacted. As noted
earlier, a litigation decision not to contact the authors is something NTP has
to live with.
With respect to Reference C1, one reason staples might have been
removed by the Library was to replace a torn page. Also removal of staples
would make copying the document easier. After copying, the staples would
be "replaced" with new staples. Removal of the staples does not give us
pause even if it gives Browne pause.
We have considered all of the Browne testimony, but we decline to
credit that testimony to the extent it attempts to persuade us that any of
References C1 through C8 were altered in some inappropriate way after they
were received, catalogued and shelved by the Library.
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In assessing the weight to be given the Browne testimony, we in no
way suggest that he is not telling us the truth about his examination or his
findings. What we cannot accept are findings which are based on
possibilities and speculation. Even if Browne's possibilities and speculation
could be argued to be a "reasonable doubt" in a criminal case, they do not
overcome the credible account provided to the USPTO through the Digernes
letter countersigned by the Library Director.
(d)
We hold that NTP has failed to show that the Examiner erred in
finding that the copies of References C1 through C8 filed by the third-party
requester are authentic.
(2) Accessibility
NTP maintains that the third-party requester provided copies of
References C1 through C8, which the third-party requester obtained from the
Library in 2005. A reference with a 2005 prior art date, of course, is not
prior art to NTP.
NTP's issue with the eight documents seems to be whether the
documents reasonably could be accessed at the Library by a person of
ordinary skill in the art. NTP says "no" and the third-party requester says
"yes." The Examiner agreed with the third-party requester. The issue
becomes whether NTP has shown that the Examiner erred.
Because NTP tells us that no one in the Library would "agree to
provide an affidavit or declaration attesting to any facts," NTP has made
several assumptions (Appeal Brief, page 41). Those assumptions are the
same as those made by Rhyne.
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The existence of a single printed document, sufficiently catalogued
and available at a public library, generally is a printed publication within the
meaning of 35 U.S.C. § 102. For example, a single printed thesis properly
catalogued and shelved in the library of Freiburg University in Germany was
held to be a printed publication. In re Hall, 781 F.2d 897, 899-900 (Fed.
Cir. 1986). Hall demonstrates that Rhyne's concern whether anyone would
have "been motivated to fly to Norway" is irrelevant. Rhyne Supplemental
Declaration, ¶ 50, line 4. On the other hand, a single "thesis" received by the
library of the University of Toledo in Ohio, but in no way catalogued or
shelved, was held not to be a printed publication. In re Bayer, 568 F.2d
1357, 1362 (CCPA 1978).
A thesis "partially" catalogued, such as a thesis at Reed College in
Portland Oregon, via author index cards stored in a shoe-like box, was held
not to be a printed publication. In re Cronyn, 890 F.2d 1158, 1161 (Fed.
Cir. 1989). The 2-1 vote in Cronyn shows that the issue can be fairly
debatable.
The case before us is much closer to Hall than it is to either Bayer or
Cronyn. Nevertheless, each case is considered on its own facts. In re
Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). One fact of interest is a
comparison of the letters to the USPTO from Freiburg University in Hall
(found to be sufficient) and the Digernes letter before us (which contains
considerably more detail than the letter to the USPTO in Hall). The case
before us is not an index card collection in a shoe box. The case before us is
not an uncatalogued and unshelved thesis. Rather, the eight documents were
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received, catalogued and shelved in the Library before the NTP inventors
entered the field.
While Rhyne says a person skilled in the art would not have been able
to locate the eight documents in the BIBSYS system in place in the Library,
Sorsdahl has a different view. As noted earlier, we have credited the
Sorsdahl view over that of Rhyne. We find, therefore, that the eight
documents were accessible and that a reasonable search of the Library would
have uncovered the documents.
In making our findings and reaching our decision, we note that
someone found the eight documents. We are not sure by what process, or
how the eight documents were found. According to NTP, "[t]he only
evidence … is a Wall Street Journal article indicating that RIM became
aware of the documents as a result of a 'tip' from an industry insider." Reply
Brief, page 23. Even if RIM was "tipped" off to the documents, we have
resolved the accessibility issue on the basis of the evidence before us
without according the Wall Street Journal article much, if any, weight. On
evidence before us, we are satisfied that the documents (1) were timely
received, cataloged and shelved in the Library, (2) were accessible and (3)
that one skilled in the art reasonably could have found the eight documents
using the tools available in the Library. Nothing more is needed.
NTP has failed to establish that the Examiner erred in holding the eight
documents to be printed publications within the meaning of 35 U.S.C. § 102.

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G. NTP’s Antedation of Perkins and Hortensius as prior art.
Procedural History
An examiner rejected the appealed claims under 35 U.S.C. § 103 as
unpatentable over a number of references. Those references included the
Perkins and Hortensius patents. Each of the patents has an effective date of
October 29, 1990. NTP’s earliest application for which it claims benefit was
filed later on May 20, 1991, giving NTP a possible constructive reduction to
practice no earlier than that date.
During prosecution NTP offered a showing under 37 C.F.R. § 1.131
attempting to antedate the patents. The Examiner was unconvinced by the
showing, maintained the rejections, and NTP appealed.
After an oral argument, we ordered additional briefing on the issue of
antedation. Order mailed November 6, 2008. The order found:
that the Appeal Brief and Reply Brief (the latter basically
restating what is found in the former) do not permit us to
understand in any cogent way the issues raised by NTP.
Accordingly, we invite NTP to file a supplemental brief
in response to this order. Our expectation is that a
supplemental brief will permit us to address the Rule 131
showing issue in a meaningful way.
Order mailed November 6, 2008, 4. The order noted that NTP had not
provided guidance explaining how the evidence relied upon established facts
sufficient to support a holding of invention prior to the effective filing dates
of the Perkins and Hortensius patents. Order mailed November 6, 2008, 5.
NTP filed its first supplemental brief on § 1.131 matters and the
accompanying exhibits. NTP 1st Supplemental Brief received December 15,
2008. We reviewed the paper and exhibits and held that NTP failed to
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establish a date of invention prior to the effective filing date of the Perkins
and Hortensius patents. Memorandum Opinion and Order mailed, February
18, 2009, 33. However, our opinion noted that we used a different rationale
for holding NTP’s § 1.131 effort insufficient. We allowed NTP to file an
additional brief and additional evidence on its antedating effort.
Memorandum Opinion and Order mailed, February 18, 2009, 33. NTP filed
a second supplemental brief and additional evidence. 2nd Supplemental
Brief filed April 22, 2009.
Principles of Law – Antedation under 37 C.F.R. § 1.131
The purpose of filing a 1.131 declaration is to demonstrate that the
applicant invented the subject matter of the rejected claims prior to the
effective date of a reference. 37 C.F.R. § 1.131(a); In re Asahi/America Inc.,
68 F.3d 442, 445 (Fed. Cir. 1995). Section 1.131(a) (2003) provides in
relevant part:
(a) When any claim of . . . a patent under
reexamination is rejected, the inventor of the subject
matter of the rejected claim, the owner of the patent
under reexamination, . . . may submit an appropriate oath
or declaration to establish invention of the subject matter
of the rejected claim prior to the effective date of the
reference or activity on which the rejection is based. The
effective date of a U.S. patent, . . . is the . . . date that it
is effective as a reference under 35 U.S.C. 102(e). . . .
The rule specifically requires the presentation of evidence proving
facts establishing either (1) prior conception of the invention and diligence
from before the effective date of the reference to a subsequent actual or
constructive reduction to practice or (2) an actual reduction to practice of the
invention prior to the effective date of the reference. 37 C.F.R. § 1.131(b);
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In re Costello, 717 F.2d 1346, 1349 (Fed. Cir. 1983). Section 1.131(b)
specifies the quality of proofs that are necessary:
(b) The showing of facts shall be such, in character
and weight, as to establish reduction to practice prior to
the effective date of the reference, or conception of the
invention prior to the effective date of the reference
coupled with due diligence from prior to said date to a
subsequent reduction to practice or to the filing of the
application.
The rule also requires more than just the oath or declaration of the inventors
generally averring that they conceived or reduced to practice the subject
matter of the claims before the date of the reference. It requires objective
evidence supporting the inventor’s testimony:
Original exhibits of drawings or records, or photocopies
thereof, must accompany and form part of the affidavit or
declaration or their absence must be satisfactorily
explained.
37 C.F.R. § 1.131(b).
The one asserting a prior date of invention bears the burden of
establishing facts necessary to prove earlier conception or an earlier actual
reduction to practice. 37 C.F.R. § 1.131(b); In re Facius, 408 F.2d 1396,
1404 (CCPA 1969). Thus, NTP bears the burden of proving prior
conception or actual reduction to practice of the rejected subject matter.
Conception and reduction to practice are well defined in patent law.
“Conception is the formation ‘in the mind of the inventor of a definite and
permanent idea of the complete and operative invention, as it is therefore to
be applied in practice.’” Singh v. Brake, 317 F.3d 1334, 1340 (Fed. Cir.
2003) quoting Kridl v. McCormick, 105 F.3d 1446, 1449 (Fed. Cir. 1997)
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(citations omitted). An idea is definite and permanent when the inventor has
a specific, settled idea, a particular solution to the problem at hand, not just a
general goal or research plan he hopes to pursue. See Fiers v. Revel , 984
F.2d 1164, 1169 (Fed. Cir. 1993); Amgen, Inc. v. Chugai Pharmaceutical
Co., 927 F.2d 1200, 1206 (Fed. Cir. 1989). Conception “is complete only
when the idea is so clearly defined in the inventor's mind that only ordinary
skill would be necessary to reduce the invention to practice, without
extensive research or experimentation,” Burroughs Wellcome Co. v. Barr
Laboratories Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994).
Proof of conception requires objective evidence of the inventor's
subjective beliefs. Invitrogen Corp. v. Clontech Laboratories Inc., 429 F.3d
1052, 1064 (Fed. Cir. 2005). Those proofs must address all limitations of
the claimed invention. Burroughs Wellcome, 40 F.3d at 1228, citing
Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985) (conception must
include every feature of claimed invention). There must be evidence
establishing what was in the inventor’s mind prior to the critical date by
objective evidence of what the inventor has disclosed to others, and what
that disclosure would fairly suggest to one of ordinary skill in the art. In re
Jolley, 308 F.3d 1317, 1323 (Fed. Cir. 2002).
Actual reduction to practice occurs when a physical embodiment of
the claimed subject matter has been made or, in the case of a process, the
process has actually been performed.
Actual reduction to practice requires proof of an actual physical
embodiment or performance of a process that includes all limitations of the
claims. In re Garner, 508 F.3d 1376, 1380 (Fed. Cir. 2007); UMC
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Electronics Co. v. U.S., 816 F.2d 647, 652 (Fed.Cir. 1987), cert. denied, 484
U.S. 1025 (1988) (“[U]nder our precedent there cannot be a reduction to
practice of the invention here without a physical embodiment which
included all limitations of the claims.”); Hummer v. Administrator of
National Aeronautics & Space Administration, 500 F.2d 1383, 1387 (CCPA
1974).
While logically conception of an invention should precede reduction
to practice. This is not always the case. Depending on the particular facts,
conception and reduction to practice may occur simultaneously. Burroughs
Wellcome, 40 F.3d at 1228; Amgen, Inc. v. Chugai Pharmaceutical Co., 927
F.2d 1200, 1206 (Fed.Cir. 1989); Alpert v. Slatin, 305 F.2d 891, 894, (CCPA
1962).
While the definitions of conception and actual reduction to practice
are the same for both Rule 131 practice and interference, the proofs
sufficient to show prior conception or actual reduction to practice can be
different. In an interference, proof of conception and reduction to practice
must demonstrate conception or reduction to practice of all the limitations of
the count. With respect to § 1.131, the focus is on the subject matter of the
rejected claims. 37 C.F.R. § 1.131(a). While the language of that rule
expressly requires proof demonstrating prior invention “of the subject matter
of the rejected claims”, the jurisprudence interpreting § 1.131 holds that
proof of conception or actual reduction to practice of subject matter that
would render the subject matter of the rejected claims obvious to a person
skilled in the art may be sufficient. E.g., In re Stryker, 435 F.2d 1340, 1341
(CCPA 1971). However, all limitations of the rejected claims must be
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accounted for whether the proofs show each limitation of the rejected subject
matter or render the limitation obvious. See, In re Spiller, 500 F.2d 1170,
1176-77 (CCPA 1974) (CCPA evaluated each of the claim limitations that
were not included in the actual reduction to practice shown in the § 1.131
affidavit and held each would have been obvious to one having ordinary
skill in the art).10
As the burden of establishing facts showing an earlier date of
invention rests with the one asserting an earlier date (37 C.F.R. § 1.131(b);
Facius, 408 F.2d at 1404), the burden of establishing that any differences
between the conception or actual reduction to practice and the rejected
subject matter would be obvious also rests with the one asserting an earlier
date of invention.
NTP argues that the correct legal standard for conception requires
only evidence of an idea. 2nd Supplemental Brief 7-9. NTP’s argument is
correct but incomplete. The idea must be of a “complete and operative
invention, as it is therefore to be applied in practice.” Singh, 317 F.3d at
1340. To prove conception, the evidence must also establish the idea
included all the limitations of the rejected claims. Burroughs, 40 F.3d at
1228. Thus, assuming that the NTP inventors had the broad general idea of
and were working on a system for transmitting originated information in an
electronic email system prior to the effective date of the references,

10 Under the jurisprudence relating to § 1.131, conception and actual
reduction to practice may also be proved by facts demonstrating the prior
invention of an embodiment that meets the claim limitations and also
includes as much of the invention as taught in the references. In re Tanczyn,
347 F.2d 830, 832 (CCPA 1965).
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possession of that idea would not establish prior invention of the “subject
matter of the rejected claims” as required by § 1.131.

Summary of Decision on Antedation
We have considered NTP’s 1st and 2nd Supplemental briefs and
reviewed the evidence relied upon. NTP failed to meet its burden of
showing facts establishing either prior conception or prior actual reduction
to practice of the subject matter of the rejected claims. NTP’s proofs do not
establish that they had a complete conception or actual reduction to practice
of the claimed wireless e-mail system and process including all of the
limitations of the rejected claims prior to the effective date of the Perkins
and Hortensius patents.
Specifically, NTP has not proved by a preponderance of the evidence
a prior conception or actual reduction to practice of a system or process
including (1) wirelessly transmitting originated information in an electronic
mail system, e.g., an e-mail message11 and (2) sending other originating
information only through a wired connection.
Since prior conception has not been proved, it is unnecessary for us to
consider NTP’s case on diligence.

11 Section A includes our interpretation of “originated information” and
“electronic mail system” in the context of the claims. Although we have
determined that “originated information” in the context of the claims is “an
e-mail message” we disagree that “an e-mail message” should be interpreted
as narrowly as suggested by NTP. In this section of the opinion, we
sometimes refer to “originated information” in the context of the claims as
“an e-mail message” or “e-mail” like NTP does. See, e.g., 1st Supplemental
Brief 5:11-12.
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Analysis
NTP’s Antedation case
The effective date of the Perkins and Hortensius patents is October 29,
1990. NTP alleges a conception in July of 1990 or no later than October 6,
1990. 1st Supplemental Brief 5. NTP also alleges an actual reduction to
practice “no later than October 26, 1990.” 1st Supplemental Brief 14. NTP
argues that the subject matter of each of the 133 claims was “conceived and
either actually reduced to practice or constructively reduced to practice with
diligence beginning before the effective date of the Perkins, Hortensius and
Harrison references . . . .” 1st Supplemental Brief 25:9-11.12
To prove conception and actual reduction to practice, NTP relies on
what it calls an element-by-element analysis of the claims of its patent. 1st
Supplemental Brief 25-48. NTP’s approach essentially reproduces each
independent claim, and following selected portions, adds a parenthetical said
to identify “the element or other support for conception and/or actual
reduction to practice, followed by a slash (“/”), followed by the element or
other support for constructive reduction to practice” in the specification of
Patent 5,436,’960. 1st Supplemental Brief 26, n.2. For example, with
respect to the Claim 1 limitation requiring sending e-mail wirelessly, NTP
submits the following:
A RF information transmission network (e.g., Network,
DF's 1-18, 35, 90/RF information transmission network
302) for transmitting the originated information

12 Only Perkins and Hortensius are applied in rejections involved in this
appeal.
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1st Supplemental Brief 26:14-15. NTP tells us that “everything to the right
of the ‘/’ describes constructive reduction to practice as demonstrated in the
specification of the ‘960 Patent.” 1st Supplemental Brief 26, n.2.
We do not find NTP’s approach helpful in explaining how the
submitted evidence meets its burden of proving prior invention.
First, the pertinence of the portions of the ‘960 specification said to
show a constructive reduction to practice is not apparent to us. There is no
issue that has been raised in this appeal which implicates the constructive
reduction to practice date of NTP’s rejected claims. It is unnecessary,
therefore, for us to decide whether or not the rejected subject matter was
constructively reduced to practice on May 20, 1991.
With respect to the portions of the parenthetical to the left of the “/”,
said to show “the element or other support for conception and/or actual
reduction to practice,” NTP sends us on a “scavenger hunt.” NTP does not
directly identify and explain the evidence which would show the conception
and/or reduction to practice of the particular claim element. Indeed, NTP
does not even separately address conception and actual reduction to practice.
Rather it directs us to its proposed findings of fact, designated by “DF,”
which in turn directs us to its exhibits and/or other proposed facts. The
exhibits often direct us to still other exhibits. We are left to sort through
NTP’s submissions to figure out the relevance of the documents and
testimony.
For example, in the discussion of Claim 1 and the limitation requiring
that the originated information be transmitted by an RF information
transmission network, NTP directs us to “e.g., Network, DF’s 1-18, 35, 90.”
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1st Supplemental Brief 27:1-2. Those proposed facts direct us to look at
numerous portions of Exhibit 1001, portions of NTP’s Patent 5,436,960 and
9 additional patents and 9 additional applications said to be incorporated by
reference into the ‘960 patent, portions of NTP’s Patent 5,045,850 patent,
NTP’s Patent 4,870,410, and selected portions of Exhibit 1002. DF 35
additionally directs us to DF 61 which again directs us to portions of Exhibit
1001 and which in turn references the “Campana patents” and the Telefind
E-mail Integration document (Exhibit 1002). The referenced portions of
Exhibit 1001 direct us to portions of the “Campana Patents,” the “Telefind
Patents” and other exhibits.
How the referenced document supports the proposed finding of fact or
the referenced claim limitation is not explained. Indeed, much of the
material cited by NTP to support conception or actual reduction to practice
with respect to particular claim limitations appears to us to have no
relationship to prior invention of that limitation. For example, for the
limitation in Claim 1 relating to originated information, or e-mail, being
transmitted by an RF information transmission network, NTP directs us to,
inter alia, DF 1-18, which includes DF 2. 1st Supplemental Brief 27:1-2.
DF 2 refers to 9 patents and 8 applications said to provide details on a
network with wireless capability (1st Supplemental Brief 2:15-19), but, our
review indicates, they have no relationship to sending e-mail. Instead, they
appear to relate to sending pager messages. The significance of those
patents to proving the date of prior invention of a system or process for
wirelessly transmitting e-mail is not explained.
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Notwithstanding the lack of guidance from NTP, we have attempted
to follow NTP’s clues. We have reviewed the information said to show
conception or actual reduction to practice of each limitation of each
independent claim. Our review shows a failure to prove either prior
conception or prior actual reduction to practice of systems or processes
having all the claim limitations. In presenting its antedation case NTP has
not separately argued conception and actual reduction to practice. Our
analysis also treats them together.
We will focus our discussion on two limitations of the rejected subject
matter: (1) the requirement that an e-mail be sent wirelessly and (2) the
requirement that the electronic mail system transmit other originated
information through a wireline without transmission using the RF
information transmission network. Each of the independent claims, and by
incorporation by reference, each of the dependent claims require both.13

13 See e.g., Claim 1 (“A system for transmitting originated information from
one of a plurality of originating processors in an electronic mail system to at
least one of a plurality of destination processors in the electronic mail
system comprising . . . a RF information transmission network for
transmitting the originated information to at least one RF receiver which
transfers the originated information to the at least one of the plurality of
destination processors . . . each electronic mail system in the system
transmits other information from one of its plurality of originating
processors through a wireline to at least one of its plurality of destination
processors without transmission using the RF information transmission
network. . . .”).

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Conception and Actual Reduction to Practice of Wirelessly
sending e-mail
NTP’s claims include sending e-mail wirelessly. Specifically, the
claims are directed to a system and process requiring that originated
information in an electronic mail system be transmitted by an RF
transmission network to a destination processor. For example Claim 1
requires:
A system for transmitting originated information from
one of a plurality of originating processors in an
electronic mail system to at least one of a plurality of
destination processors in the electronic mail system
comprising . . .
a RF information transmission network for
transmitting the originated information to at least one RF
receiver which transfers the originated information to the
at least one of the plurality of destination processors

See e.g., Claim 1, Appeal Brief filed December 21, 2006 at 125. As support
for conception and actual reduction to practice an e-mail system and process
including the above limitations, NTP refers us to proposed facts 1-19, 20,
23, 24, 33, 35, 48, 89, 90 95 and 100-101. See e.g., 1st Supplemental Brief
26:2-8 to 27:7 (relating to Claim 1).
The above-listed proposed facts refer us to specific portions of the
following documents and testimony: (1) The Telefind E-Mail Intergration
Document (Exhibit 1002) at p. 1, ¶¶ 6 and 7, p. 2, ¶¶ 1, 4 and 5, p. 3, ¶¶ 1-2
p. 4, ¶¶ 2-3, pp. 6-14, p. 16 (circuit diagram) and p. 19; (2) Campana’s
Declaration (Exhibit 1001), ¶¶ 4-6, 8-13, 16, 17, 29, 31 and 37; (3)
Campana’s trial testimony (Exhibit 1043) at 145:18 – 146:7, 148:22 -149:17,
165:7-166:1, 167:12-25 and 175:21-25; (4) Campana’s deposition testimony
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(Exhibit 1034) at 176:10-177:23 and 210:25-211:7; (5) Patent 5,436,960,
Fig. 2, and “related description in the Specification”; (6) Patent 5,045,850,
Fig. 7; Abstract and 13:32-40 (7) Patent 4,870,410; (8) Exhibit 1007 and (9)
portions of the deposition and trial testimony of Michael Ponschke (Exhibits
1040 and 1045).

The Telefind Integration Document - Exhibit 1002
NTP’s Exhibit 1002 is critical to its case for antedation. 2nd
Supplemental Brief 12:1-6. Exhibit 1002 has been referred to in these
proceedings as TEI or TEID, acronyms for Telefind E-mail Integration and
Telefind E-mail Integration Document, respectively. The former is the title
appearing on the first page of Exhibit 1002.
That document however, is not probative to establish that the
inventors conceived or actually reduced to practice sending e-mail message
wirelessly prior to the October 29, 1990, effective date of the references.
First we note the date of the exhibit. The first page of the exhibit lists
three revisions, and a date corresponding to each. The revisions are
designated 0, 1 and 2. Exhibit 1002 is Revision 2 and is dated April 9, 1991.
Exhibit 1002 includes four sections each beginning with its own title page.
The sections are titled: (1) “‘C’ Version Driver Routine for Pager to
Computer RS-232 Serial Interface” (2) “‘Better Basic’ Driver Routine for
Pager to Computer RS-232 Serial Interface” (3) “Pager to Computer Serial
RS-232 Interface” and (4) “AT&T E-Mail Entry Screen, Entry Methods, and
Supportive Help Commands.” Each section title page includes a list of
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revision dates. The final revision date on each section title page except the
last is April 9, 1991. The final revision date on the title page of the last
section, “(4),” is March 1, 1991. To the extent Exhibit 1002 is evidence of
what was in the mind of the inventors, it can establish a date of conception
no earlier than March 1, 1991, for the fourth section and no earlier than
April 9, 1991, for the remainder of the document. Both dates are subsequent
to the October 29, 1990, effective filing date of the Perkins, Hortensius and
Harrison references.
Revision 0 of Exhibit 1002
Recognizing that Exhibit 1002 did not antedate the references, NTP
attempts to rely on the Revision 0 date of October 6, 1990. The first page of
Exhibit 1002 and each of the section title pages list a “Revision 0” date of
October 6, 1990. That date is earlier than the effective date of the
references. NTP, however, has not provided a copy of Revision 0. Instead,
NTP relies on inventor testimony and documents as evidence establishing
the content of unproduced Revision 0. We have reviewed NTP’s arguments
and evidence. We hold that NTP has failed to prove the content of Revision
0.
We will assume, for the purpose of this opinion, that there was a
Revision 0 in existence on October 6, 1990. However, Exhibit 1002 itself
establishes that the content of the document was amended after that date.
Exhibit 1002 does not identify what was removed or added during the
revision process. Thus, Exhibit 1002 does not provide objective evidence of
the content of Revision 0 on October 6, 1990.
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NTP argues that the schematic circuit drawing of the RS-232 Port
appearing at Page 16 of Exhibit 1002 confirms the content for Revision 0.
NTP argues that the drawing “shows a creation date of October 23, 1990”
showing that the inventors had earlier conceived the invention. 2nd
Supplemental Brief 13.
It is not apparent to us how a document dated October 23 establishes
the content of another document on October 6.
In any event, the schematic as it may have appeared in Revision 0 is
not part of the record. Indeed, the schematic in Exhibit 1002 raises more
questions then it answers as to the content of Revision 0. The circuit
drawing is part of the section of Exhibit 1002 having the title “Pager to
Computer Serial RS-232 Interface.” The section has but two pages, the title
page (page 15) and the circuit drawing (page 16). NTP says the drawing
was created on October 23, 1990. 2nd Supplemental Brief 13:11-12.
Consistent with that argument, the drawing includes the notation “10/23/90”
in the lower right hand corner. However, the section title page lists a
Revision 0 date of October 6, 1990. If the circuit drawing was created on
October 23, 1990, as NTP says, what was the content of the Revision 0
version of the “RS-232 Interface” section on October 6, 1990? Additionally,
directly adjacent to “10/23/90” is a notation apparently indicating that the
drawing was revised on March 29, 1991 (“REV #/ Date 01 3/29/91”).
Thus, the October 23, 1990, version of the schematic is also not of record.
Additionally the title page of the RS-232 section apparently indicates yet
another revision on April 9, 1991. The schematic diagram section of Exhibit
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1002 simply provides no basis for establishing the content of Revision 0 on
October 6, 1990 or any date earlier than the April 9, 1991, revision date.
NTP argues that the Revision 0 document represented a complete
wireless e-mail integration system. 2nd Supplemental Brief 14. NTP says
that the purpose of Revision 0 was to provide initial commercial
documentation of wireless e-mail integration and that Revision 0 always
represented functional, tested software ready for commercial availability.
We do not see how NTP’s characterization of what Revision 0 was
intended to be establishes what was or was not disclosed in Revision 0 on
October 6, 1990.
NTP directs us to a long list of exhibits said to establish the content of
Revision 0 including the declaration of and trial testimony of one of the
inventors Thomas Campana. We reject the Examiner’s position (Answer
194) that Mr. Campana’s declaration can only be considered without the
declaration of all other co-inventors if there has been a showing that Mr.
Campana alone invented the subject matter of the claims at issue.
Campana’s Declaration - Exhibit 1001
Campana’s declaration addresses the content of Revision 0. For the
reasons detailed below, we do not credit his declaration. His declaration on
the content of Revision 0 is inconsistent with essentially contemporaneous
memos written by him. Additionally, Campana’s recollections as to the
content of Revision 0 are not credible in light of his strong interest in the
outcome of this reexamination and the fact that his declaration was made
over twelve years after the date of Revision 0.

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(a) Contemporary Documents
Campana testified that “from a complete review of documents” he
concluded that he was the author of the Revision 0 document: “[T]he
description of the system in [Exhibit 1002] which was revision 0 was written
by me.” Exhibit 1001, 13-14 ¶ 32. In his declaration (Exhibit 1001)
Campana testifies that Exhibit 1002 included the “primary substance” of
Revision 0. Exhibit 1001, 14 ¶ 35. He further testified that the document
was only substantially changed in two respects. Exhibit 1001, 13-14 ¶ 32.
The first change was said to be in response to a February 11, 1991, fax from
AT&T relating to a commercial embodiment. Exhibit 1001, 14 ¶ 33.
According to Campana, this change resulted in the March 1, 1991, Revision
1. Id. The second was the revision to the circuit diagram on March 29,
1991. Exhibit 1001, 14 ¶ 34. This change was said to be the basis of the
April 9, 1991, revision. Id.
Revision 0 is dated October 6, 1990. From before that date and
continuing for a substantial period after, Campana and Telefind were
attempting to establish business relationships with AT&T and other
companies involving wireless communications. Campana and other
employees were involved in a number of meetings with these potential
partners. A number of memos were written summarizing the meetings.
Exhibits 1003, 1004, 1005, and 1009 are copies of memos written by
Campana between August 16, and October 9, 1990. Exhibit 1007 is a memo
written by A. Andros dated November 1, 1990. Each of these memos
discusses meetings with AT&T. The detail in describing what transpired
during the meetings indicates that developing a business relationship with
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AT&T was important. See especially Exhibit 1007 at 3 (“The Developing
Telefind/AT&T Strategic Alliance”).
What we find particularly noteworthy is that none mentions e-mail,
the central focus of Exhibit 1002. Rather, they discuss messaging.
As we understand it, “messaging” is not the same as e-mail and NTP
seems to distinguish the two. All of NTP’s claims specifically require
sending messages by e-mail to a destination processor. Thus, wirelessly
sending non-email messages to a destination processor is not part of the
rejected subject matter. NTP notes that wirelessly sending non-email
messages, such as stock quote information, to a pager or “paging receiver” is
part of the prior art with respect to the claimed subject matter. For example,
NTP says that “U.S. Patent No. 5,045,850 . . . reduced to practice before . . .
the Campana Patents - describes non-email information being transmitted
from a ‘page source’ . . . through the Network to a ‘paging receiver.’” 1st
Supplemental Brief 3:10-13. A paging receiver is a type of destination
processor.14 Thus, messages and e-mail are distinct as far as the rejected
subject matter is concerned.
As we noted above, the memos contemporaneous with the October 6,
1990 date of Revision 0 --those written between August 16 and November 1,
1990, do not mention e-mail. E-mail is not mentioned in any NTP document
until a memo dated November 21, 1990, from Campana to Jack Richards.

14 The destination of the message is the paging receiver. Patent 5,045,850,
e.g., col. 4:40-44. Patent 5,045,850 says that the preferred paging receivers
are described in a number of patents incorporated by reference including
4,857,915. Patent 5,045,850 col. 11:25-27. Figure 3 and corresponding text
of the ‘915 patent at col. 14:28-32, show that the paging receiver is a
processor.
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Exhibit 1006. After that date, discussion of wireless e-mail is significant in
virtually all of NTP’s documentary exhibits. See, Exhibits 1002, 1008,
1011–1018, 1026, and 1030. The documents (Exhibits 1008, 1011–1018,
1026, and 1030) cover the period November 21, 1990 to March 1, 1991.
In his declaration Campana says that he was the author of Revision 0
and that only two significant changes were made in preparing Revision 2
(Exhibit 1002). Neither was identified as adding a reference to e-mail.
Thus, Campana implicitly says that Revision 0, like Exhibit 1002, was
directed to e-mail integration into the Telefind wireless paging system.
Exhibit 1002, as well as the other documents referenced above, show
the importance of creating a business relationship with AT&T and the
significance of wireless e-mail in creating that relationship. The reference to
the AT&T e-mail entry screen and help commands in Exhibit 1002, 17-19,
and ostensibly in Revision 0, reflects this importance. In light of the
importance of the development of a relationship with AT&T, the failure of
the memos written about the time Campana says he wrote Revision 0
(Exhibits 1003-1005, 1007 and 1009) is inconsistent with his testimony on
the content of Revision 0. See also Exhibit 1007, 3, “The Developing
Telefind/AT&T Strategic Alliance.” Had Revision 0 included the reference
to wireless e-mail as implied by Campana’s testimony, we think that
wireless e-mail would have been a significant part of the discussions with
AT&T and reflected in the memos authored about the same time, as it was in
subsequent memos.

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(b) Campana’s Interest and Time of
his declaration
Campana’s declaration on the content of Revision 0 is problematic for
two additional reasons: (1) Campana’s strong interest in the outcome of this
reexamination and (2) the long period of time between the events to which
he testifies and the date of his declaration and testimony.
Campana is an inventor. As a general proposition an inventor’s
testimony about the facts of conception and actual reduction to practice of
their invention must be supported by more than the inventor’s bare
testimony. This is reflected in the requirement of § 1.131(b) that the
inventor’s declaration must include “[o]riginal exhibits of drawings or
records, or photocopies thereof, must accompany and form part of the
affidavit or declaration or their absence must be satisfactorily explained.” It
is also reflected in the requirement that proof of conception requires
objective evidence of what the inventor has disclosed to others. Jolley, 308
F.3d at 1323.
Additionally, at the time of his declaration Campana was also the Vice
President and one of two board members of NTP. Exhibit 1001, ¶ 1. NTP is
a patent holding company whose principal assets include the patents
involved in these reexaminations. The result of these proceedings may be
cancellation of NTP’s patent claims and loss of its assets. Thus, Campana
had a significant interest in the outcome of the reexamination.
A witness’ interest is relevant in determining the weight to be given
declaration evidence submitted during ex parte patent examination. Paragon
Podiatry Lab., Inc. v. KLM Lab., Inc., 984 F.2d 1182, 1191 (Fed. Cir. 1993)
(Holding inequitable conduct resulted from the failure to disclose to the
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examiner that the declarants who testified supporting patentability had a
significant financial stake in the assignee of the invention.); Refac Int’l, Ltd.
v. Lotus Development Corp., 81 F.3d 1576, 1582 (Fed. Cir. 1996) (holding
that applicant committed inequitable conduct in withholding information on
the inventor’s significant prior connections with the affiants - the prior
connection was considered material in deciding the weight to be given
affidavits supporting the patentability of the claims).
Campana’s interest in the outcome of the reexamination is particularly
important given the length of time that has passed between the events and
the testimony on those events. Campana’s declaration (Exhibit 1001) and
trial testimony (Exhibit 1043) were given over twelve years after the alleged
dates of conception and actual reduction to practice. Because of the long
period of time, we think his recollections on what was done on specific dates
and the content of Revision 0 are unreliable and of little probative value.
The passage of a long period of time between the event and the testimony on
the event may adversely effect the weight of the testimony. The Barbed
Wire Patent, 143 U.S. 275, 289 (1892) (After a lapse of twenty-five years it
is highly improbable that any witness who saw the barbed wire for a single
day would be able to describe it accurately); Morgan v. Daniels, 153 U.S.
120, 127-129 (1894) (testimony on the existence of drawings showing
conception of the invention more than eight years after the alleged creation
of the drawings “is not of a character to carry great weight.”); Woodland
Trust v. Flowertree Nursery Inc., 148 F.3d 1368, 1369 (Fed. Cir. 1998) (The
relationship of the witnesses and the fact that the events to which they
testified occurred over twenty years ago were insufficient to prove prior use
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of the invention); In re Lippold, 150 F.2d 714, 717 (CCPA 1945) (Affirming
the decision of the Office declining to credit affidavit testimony submitted
under Rule 75 (a predecessor to § 1.131) that many years before the
witnesses observed a machine operated in a way and that was said to be
constructed in accordance with the specifications of a certain application or
patent.)
Because of his interest and the period of time between the Revision 0
date and the date of the declaration, we do not credit Campana’s testimony.
NTP argues that under the correct legal standard, the Board is required
to accept Campana’s sworn testimony. 2nd Supplemental Brief 2-6. In other
words, according to NTP, the Board may not weigh the strength of the
evidence presented but rather must simply accept all of its sworn testimony.
In making this argument NTP misconstrues the functions of this board
in reviewing adverse decisions of examiners on patentability. In evaluating
examiners’ decisions, this Board not only acts to review the correctness of
the examiner’s legal conclusions, but also acts as a trier of fact. As a trier of
fact, the Board has broad discretion as to the weight to give to declarations
offered in the course of prosecution. In re American Academy of Science
Tech Center, 367 F3d 1359, 1369 (Fed. Cir. 2004). See also, Velander v.
Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“[A]ccord[ing] little weight
to broad conclusory statements [in expert testimony before the Board] that it
determined were unsupported by corroborating references [was] within the
discretion of the trier of fact to give each item of evidence such weight as it
feels appropriate.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 294 (Fed. Cir. 1985) (“Opinion testimony rendered by experts
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must be given consideration, and while not controlling, generally is entitled
to some weight. Lack of factual support for expert opinion going to factual
determinations, however, may render the testimony of little probative value
in a validity determination.” (citations omitted)). Contrary to NTP’s
assertions, the Board is entitled to weigh the evidentiary value of the
declarations, not merely accept, without question, the averments therein
made.
Because of the inconsistencies between documents contemporaneous
with Revision 0 and the content of Exhibit 1002, Campana’s interest in the
outcome of the proceeding and the twelve years between events and his
testimony, we do not credit Campana’s testimony as to the content of
Revision 0.
Other evidence on the content of Revision 0
NTP directs us to other correspondence said to “corroborate the
Revision 0 of the TEI Document.”:
NTP relies on various Campana correspondences
between August 1990 and March 1991 (NTP Exhibits
1001, 1002, 1004, 1005, 1009, 1012, 1022, 1015, 1016,
1017, 1018) all of which support conception of July
1990, and no later than October 6, 1990.

2nd Supplemental Brief 15:20 to 16:3. For the most part NTP has not
provided an explanation of how each of these references establish the
content of Revision 0.
We have reviewed the documents.
Exhibit 1001 is Campana’s declaration which we do not credit.
Exhibit 1002 is Revision 2 of the TEID.
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All of the remaining documents except Exhibit 1022 relate to efforts to
establish a business relationship with AT&T. We have discussed a number of
them above. Exhibit 1022 is apparently the results of a patentability search.
Exhibits 1012, 1015-1018 and 1022 are dated between
December 5, 1990, and March 13, 1991. We fail to see how they can
establish the content of Revision 0 on October 6, 1990. As we noted
above, Exhibits 1003–1005, 1007 and 1009 do not mention sending e-
mail. Rather after November 1, 1990. Compare, Exhibit 1007 with
Exhibit 1006. In any event, they do not support NTP’s argument that
Revision 0 and Exhibit 1002 were substantially the same.
NTP also specifically directs us to the portion of Campana’s
declaration (Exhibit 1001, ¶ 35) stating that he used Revision 0 to
draft a letter dated November 21, 1990. 2nd Supplemental Brief 16:3-
5. That letter is of record as Exhibit 1006. NTP’s only proffered
explanation of how the letter supports the content is that Revision 0
“was the only version of the TEI Document available in October-
November 1990.”
To the extent NTP is attempting to show that Exhibit 1006 and the
other documents demonstrate that there was a Revision 0, on October 6,
1990, we again note that we have presumed that there was a Revision 0 on
October 6, 1990. It is the content of the document on that date not its
existence that is in question.
We noted Exhibit 1006 above and specifically addressed it in our
previous decision. Memorandum Opinion and Order 22:3-16. We there
noted that NTP did not provide an explanation of what was in common
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between the letter and Exhibit 1002. We also noted the existence of certain
common words and phrases but that the text was not the same. In its 2nd
Supplemental Brief, NTP asserts that the letter supports the contents of
Revision 0. Yet, our review of the content of Exhibits 1002 and 1006 shows
they are substantially different. NTP again provides no explanation of how
the contents of the letter establishes the content of Revision 0.
We have again reviewed the letter without guidance from NTP and
remain of the view that the content of the Revision 0 document can not be
gleaned from the letter. The letter appears to be a summary report of
meetings with various divisions of AT&T and the efforts to develop a
business relationship with them. The letter also appears to relate to a
wireless modem that could be attached to a laptop computer. The letter
discloses little technical content relating to the rejected subject matter and
actually appears to include substantially less technical content than Exhibit
1002. To the extent that NTP urges that the content of Revision 0 is
revealed in the November 21, 1990, letter (Exhibit 1006), the lack of
technical content seems to suggest that substantial information was added by
the revisions after the completion of the letter. Exhibit 1006 provides little
that is useful in establishing the content of Revision 0.
NTP also relies on the patent application preparation process said to
have begun in November 1990 along with the declaration of Donald Stout to
establish the content of Revision 0. 2nd Supplemental Brief 17-18 and 25.
Specifically, NTP argues that Campana contacted his patent attorney Donald
Stout in November 1990, described embodiments of the invention to Stout,
that Stout initiated a patentability search based on the November 1990
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disclosures and prepared a patentability report dated December 4, 1990.
NTP then argues that Revision 0 was the only version in existence at the
time that the application process began and must have been the one used by
Stout. Id.
NTP has not explained how any of the documents and testimony related
to the preparation of Application 07/702,319 establish what was or was not
described in Revision 0. Stout testifies that he believes Exhibit 100215 was
used as the disclosure document to prepare the applications. Exhibit 1025,
¶ 4. However, Exhibit 1002 bears a “Revision 1” date of March 1, 1991 and
a “Revision 2” date of April 9, 1991. Exhibit 1002 is Revision 2. Thus,
Exhibit 1002 did not exist in November, 1990, when Stout began the
application process. Assuming that Stout’s testimony was that he believed
he used Revision 0 as the disclosure document, he does not testify on the
content of Revision 0.
The search results (Exhibit 1022) referred to in Stout’s testimony shed
little light on the content of Revision 0. To the extent the search results
might reflect what Stout was searching, that search was apparently not based
solely on Revision 0. It was apparently also based upon the additional
embodiments described to Stout by Campana. 2 nd Supplemental Brief
17:17-18. Thus, the search results are of little value as indicating the content

15 Stout’s testimony refers to an “Exhibit 2”. Stout’s Exhibit 2 is a copy of
the Telefind Email Integration Document. It was resubmitted as Exhibits
1002 and 1027. Memorandum Opinion and Order 11. The order for
rebriefing on antedation required that the exhibits be sequentially
renumbered. Order – Request for Further Briefing, mailed November 6,
2008, p. 7.
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of Revision 0. In any event, how the search results might inform the content
of revision 0 is not explained.
Lastly, with respect to the preparation of Application 07/702,319, we
note that the disclosure of Application 07/702,319, filed on May 20, 1991, is
very detailed in technical content – content apparently necessary to reduce
the claimed subject matter practice without undue experimentation. The
level of technical detail in the application, contrasts with the substantially
less technical detail in Exhibit 1002 as of April 9, 1991. The level of
technical detail in the application compared with that in Exhibit 1002 at least
suggests that development of the subject matter had been ongoing and was
in a state of flux up to the time that Application 07/702,319 was filed on
May 20, 1991.
The documents and testimony on the preparation of the 07/702,319
application provides little insight as to the content of Revision 0.
NTP argues that certain demonstrations and alleged actual reductions
to practice between August and November 1990 confirm the content of
Revision 0. 2nd Supplemental Brief 18:15 to 23:14. Specifically, NTP
argues that the August and September 1990 demonstrations to AT&T, the
October 24, 1990, Safari laptop demonstration and the November 1990
Comdex demonstration, support the content of Revision 0. NTP directs us
to a long list of Exhibits and argues that the content of the exhibits
demonstrates what was detailed in Revision 0. 2nd Supplemental Brief 19:7
to 20:6. NTP’s only explanation of how these purported demonstrations
show the content of Revision 0 is that the demonstration of a working
wireless e-mail system proves that the system must have been conceived
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prior to the date of the demonstrations and therefore confirms the content of
Revision 0. 2nd Supplemental Brief 20:7-12. The exhibits are said to
address implementations of technology embodied in Revision 0. 2nd
Supplemental Brief 19:7-16.
NTP has not explained how the exhibits demonstrate what technology
was actually described in Revision 0. We have reviewed the referenced
exhibits and fail to see how they establish the content of Revision 0. For the
most part, the exhibits relate to development of a business relationship with
AT&T and provide little detail on exactly what was demonstrated.
NTP specifically argues that the Safari laptop computer demonstration
on October 26, 1990, and the Comdex show demonstrations on the Week of
November 10, 1990, confirms the substance of Revision 0. 2nd
Supplemental Brief 20-22. However, whatever the system was that was
demonstrated on October 26 and the week of November 10, 1990, it is not
relevant to proving the content included in Revision 0 earlier on October 6,
1990. As we noted above, the development of NTP’s electronic messaging
system appeared to be an ongoing process right up to the time the
grandparent application, was filed on May 20, 1991. In addition, the
documents to which we have been directed fail to describe the details of the
system that was actually demonstrated.
NTP also relies on the trial testimony of Murali Narayanan. 2nd
Supplemental Brief 23-24. NTP says that Narayanan’s trial testimony
corroborates Campana’s testimony regarding the AT&T and Comdex
demonstrations. 2nd Supplemental Brief 23:17 to 24:2. NTP also directs us
to a memo said to be authored by Narayanan dated November 29, 1990. 2nd
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Supplemental Brief 23:17 to 24:4. The memo is said to confirm the
existence of an operational prototype. Based upon the trial testimony and
the memo, NTP argues that to demonstrate the system and its functionality
must have been conceived prior to the time of the demonstrations.
Therefore, according to NTP, the testimony and memo confirm the existence
and substance of Revision 0 on October 6, 1990. 2nd Supplemental Brief
24:15-17.
As we noted above, we have assumed for the purpose of this opinion
that a Revison 0 existed as of October 6, 1990. The testimony as to
subsequent events and the later memo can not prove the content of
Revision 0 as of October 6, 1990. Nonetheless, we have reviewed
Narayanan’s testimony (Exhibit 1044) and the Memo (Exhibit 1011). We
fail to see how either the testimony or the memo inform the content of
Revision 0 as of its issue date of October 6, 1990 and NTP has not explained
how those exhibits prove that content. Narayanan’s testimony, at best,
establishes that wireless messages, as opposed to e-mail, were received by a
laptop during the week of November 10, 1990. Exhibit 1044, 1265:12-14,
1266:8-9. This is after the October 6, 1990 date of Revision 0.
Additionally, Narayanan’s testimony provides no details as to the system
and process demonstrated.
Narayanan’s memo also fails to provide any insight into the content of
Revision 0. Indeed, it indicates that things were in a state of flux. He says
that, Telefind “is building a gateway,” that Narayanan will be providing the
details for the gateway to Telefind and that he had “heard that an initial
prototype is now operational.” Exhibit 1011, 1, ¶ 1. The date of the memo is
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November 29, 1990 long after the Revision 0 date of October 6, 1990. The
memo simply provides no details from which the content of Revision 0 on
October 6, 1990 can be determined.
NTP argues that the declaration of William White, supports NTP’s
position on the substance of Revision 0. 2nd Supplemental Brief 25:16-
26:17. We have reviewed Mr. White’s declaration (Exhibit 1031). We do
not see where Mr. White testifies on the content of Revision 0, or indeed on
any version of the Telefind Email Integration Document (Exhibit 1002).
Again we fail to see how this testimony sheds any light on the content of
Revision 0.
NTP relies on the testimony of Michael Ponschke, another of the
inventors, as corroborating “the email integration system description as it
would have been available in Revision 0 of the TEI Document . . . .” 2nd
Supplemental Brief 28:2-4. Part of his testimony is of record as
Exhibit 1040. We carefully reviewed the referenced portions and do not see
any testimony on Revision 0 or the TEI Document. Nor do we see how his
testimony provides any information on the content of Revision 0.
Thelen, another inventor testified about Revision 0. NTP relies on his
trial testimony (Exhibit 1039) as establishing the content of Revison 0. 2nd
Supplemental Brief 26:18-27:13. We have reviewed Exhibit 1039 and can
not locate, and we have not been told, where he testifies on the content of
Revision 0. He does testify on the meaning of the phrase “Revision 0,”
speculating that it “[p]robably [was] the first working version” and that he
did not recall drafting anything else. Exhibit 1039, 84:13 – 84:18. Thelen is
listed as the author of the “Better Basic’ Driver” section of Exhibit 1002.
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Exhibit 1002, p. 11. That section lists a Revision 0 date of October 6, 1990,
and a Revision 1 date of April 9, 1991. Thelen does not explain what was
added or deleted by the revision on April 9, 1991.
NTP also relies on Thelen’s declaration (Exhibit 1047) submitted in
response to our earlier opinion. 2nd Supplemental Brief 31:15 to 38:3.
Thelen testifies that he read Campana’s reconstruction of the contents of
Revision 0. He goes on to state his belief that the reconstruction was an
accurate description of what they were working on in October 1990 and that
by October 6, 1990, they had conceived the system described in pages 1-4 of
Exhibit 1002 with two exceptions. Exhibit 1047, 4, ¶ 15.
Thelen’s declaration is not enlightening on the content of Revision 0.
Revision 0 is not part of the record on appeal. The only “TEI Document” of
record is not Revision 0. It is Exhibit 1002 which is the later Revision 2.
Thelen does not say that he had any recollection of the content of Revision
0. And while he says Exhibit 1002 describes what they were “working on”
by October 1990, his general recollections of what they were “working on”
some eighteen years later, do not reliably establish what was actually
described in Revision 0. Thelen’s referenced testimony does not credibly
establish the content of Revision 0 on October 6, 1990.
NTP, in a number of places in the 2nd Supplemental Brief
mischaracterizes our position on the evidence relating to the date attributable
to Exhibit 1002. NTP asserts that we found that there was no evidence to
attribute the earlier October 6, 1990, date to the description of the email
integration system of the TEI Document. NTP also says that our decision
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was that NTP has “no evidence to support the earlier October 6, 1990
version of the TEI document . . . .” 2nd Supplemental Brief 43:17-18.
We did not hold that there was “no evidence” or no “physical
evidence.” We evaluated and weighed the evidence presented relating to the
content of Revision 0 and found that evidence insufficient to establish its
content. See Mem. Op. and Order 19:18 to 23:13. We said:
[T]he precise content of Revision 0 is critical for
establishing conception. We will decline in view of the
facts of these cases to credit 12-year old testimony about
the content of a document which is over 12 years old.
In declining to credit the Campana testimony we
have not overlooked the Campana testimony that the
"substance of the [Revision. 0] document is confirmed by
several different and independent indicia."
Mem. Op. and Order 20:27 to 21:6. We then discussed those other indicia
including documents dated between July and October 6, 1990. Mem. Op.
and Order 21:7 to 22:16 and 23:11-13. Thus, we neither held that there was
“no evidence” nor based the decision upon a premise that NTP presented no
physical evidence dated prior to October 29, 1990. And NTP has not
identified where in the record we did so. Our decision on the date
attributable to Exhibit 1002 is not the result of NTP providing no evidence.
Rather, NTP’s submitted evidence is insufficient to credibly prove the
content of Revision 0 as of October 6, 1990.
NTP has failed to prove the content of Revision 0 as of October 6,
1990. Exhibit 1002, which is dated April 9, 1991, can not establish
conception or actual reduction to practice prior to that date.

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Campana’s Declaration and Trial and Deposition
Testimony – Exhibits 1001, 1034 and 1043
We have also reviewed the referenced portions of Campana’s
declaration and trial testimony relating to conception and actual reduction to
practice of wireless e-mail. E.g., 1st Supplemental Brief 26:2-8 and 26:14 to
27:5 (relating to Claim 1) referring to DF’s 1-21, 23, 33-35, 48, 89, 90, 95,
and 99-101. We do not credit his testimony as to the dates when various
events occurred because of his interest in the outcome of the reexamination
and the length of time between the events and his declaration and testimony
on those events. We detailed our explanation on his interest and the amount
of time above in discussing Revision 0.
Patent 5,436,960
NTP also relies on certain portions of U.S. Patent 5,436,960,
including Figures 2, 10 and 11 thereof, to prove conception or actual
reduction to practice.
The ‘960 patent issued from Application 07/702,939, filed May 20,
1991. That application is the first in a chain of applications filed by NTP or
its predecessors relating to RF transmission of e-mail. NTP specifically
relies on the text appearing at column 24, lines 41-47 and Figure 11 of ‘960.
1st Supplemental Brief 11, DF 41.
The effective date of the ‘960 patent is May 20, 1991. Its disclosure is
evidence of conception and constructive reduction to practice of what is
disclosed therein no earlier than that date. Thus, the patent is simply not
relevant to proving what was in the inventors mind or what was actually
reduced to practice prior to October 29, 1990, effective date of the
references.
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Patents 5,045,850 and 4,870,410
NTP also relies on Patents 5,045,850 and 4,870,410. The disclosures
of these patents are said to be incorporated by reference in the disclosures of
the Campana patents and are apparently prior art as to the claimed subject
matter. 1st Supplemental Brief 3 ¶ 6; 4 ¶ 10; 11 ¶ 44. Both appear to describe
wirelessly sending non-email messages where the destination processor is a
pager device rather than a computer. 1st Supplemental Brief 3 ¶ 6.
Since neither relates to sending e-mail, we fail to see how they
demonstrate conception or actual reduction to practice of wirelessly sending
e-mail prior to October 29, 1990. In any event, to the extent the patents have
relevance with respect to the rejected subject matter, i.e., wireless e-mail,
they only provide evidence of conception and constructive reduction to
practice as of the effective filing date of the application into which they were
incorporated, May 21, 1990.
Andy Andros Memo dated November 1, 1990 – Exhibit
1007
Exhibit 1007 is a memo describing a meeting with the AT&T Portable
Computer Group on October 26, 1990. It is dated November 1st 1990. We
discussed the memo above. The focus of the meeting was apparently to
demonstrate the use of Telefind’s Messager paging device as a wireless
modem. Exhibit 1007, says:
The purpose of the meeting (at their request) was to
demonstrate the Telefind Messager (pager) for use as a
wireless modern to download data and messages into the
AT&T portable computer. The interface was developed
by ESA-Chicago using the Telefind technology at the
request of Mr. Murali Narayanan, of Bell Labs.
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Exhibit 1007, 1. The memo does not mention that downloading e-mail to
the AT& T computer was demonstrated.
Michael Ponschke’s deposition and trial testimony -
Exhibits 1040 and 1045
Exhibits 1040 and 1045 are the deposition and trial testimony of one
of the inventors, Michael Ponschke. At his deposition, Ponschke testified
about attending the meeting in New Jersey on October 26, 1990, apparently
discussed in the Andros memo, Exhibit 1007. He testified that Telefind’s
“paging device” was demonstrated and that e-mail messages were sent
through the devices displayed on a laptop computer. Exhibit 1040, 98:2-16,
101:11-22. However, later at trial, he clarified that he misspoke about
sending e-mail. What was demonstrated was messaging, not e-mail:
Let me clarify or explain that, what I said on that tape, I
apparently misspoke, that we did not demonstrate e-mail.
We demonstrated messaging. Like I said, everything was
happening so fast that at one time we did have e-mail, but
after reviewing documents and dates and memos that I
wrote myself, that we could not have demonstrated e-
mail.
Exhibit 1045, 1404:20 – 1405:1. His testimony is consistent with
Campana’s memos and other documents dated between August 16 and
November 19, 1990, all of which discuss messaging, not e-mail.
The August, September and October 1990
demonstrations
In addition to the facts and evidence related to wirelessly transmitting
e-mail that NTP referred us to in its element-by-element analysis, we have
also considered the evidence related to the alleged demonstration in August
– October, 1990. 2nd Supplemental Brief 18-22. The evidence to which we
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were directed does not establish that e-mail was wirelessly sent on those
dates.
NTP directs us to the following exhibits: Specific portions of
Campana’s declaration (Exhibit 1001); Exhibit 1003 at 1-2; Exhibit 1004 at
2; Exhibit 1005 at 2; Exhibit 1006 at 1; Exhibit 1007 at 1-2; Exhibit 1009;
Exhibit 1034 at 176:l0-177:23, 210:25-211:7; Exhibit 1040 at 97:19-98:19,
99:7-102:9, 103:5-104:7; and specific portions of Campana’s Trial
Testimony (Exhibit 1043); and Exhibit 1045 at 1403:12-1405:14.
Exhibits 1001 and 1043 are Campana’s declaration and Trial
testimony which we do not credit.
Exhibits 1003-1005, 1007 and 1009 are memos dated between August
16, 1990 and November 1, 1990. We discussed these above with respect to
the content of Revision 0. As we there noted, they do not refer to sending e-
mail, rather they relate to sending paging messages to a wireless modem.
Exhibits 1003-1005, 1007 and 1009 are essentially contemporaneous
with the demonstrations said to have occurred in August to October, 1990.
Yet wirelessly sending e-mail is simply not mentioned. These memos do not
establish that e-mail messages were sent during the demonstrations.
Exhibit 1034 is a portion of Campana’s deposition testimony from the
NTP v. RIM litigation. Exhibits 1040 and 1045 are portions of the
deposition and trial testimony of inventor Ponschke from that litigation.
We do not credit Campana’s testimony for the reasons we have stated
above. However, it is noteworthy that in testifying about the October 26,
1990 demonstration, Campana was not asked about sending e-mail. He was
asked about pager messages:
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Do you recall a meeting in New Jersey on October 26th,
1990 of which the Telefind pager was used to download
messages into an AT&T portable computer?
Exhibit 1034, 176:10-13. He answered:
I believe that was the date that it was demonstrated to
AT&T in New Jersey.
Exhibit 1034, 176:15-16. Thus, this portion of his deposition does not
support NTP’s position that wireless e-mail, rather than messaging, was
demonstrated on that date. The other referenced portion of his deposition
was directed to the interface between the AT&T mail system and the
Telefind system. While he said he believed the interface was working in
early October (of 1990), he did not say it was actually used to send e-mail,
rather than non-email pager messages. At best, Campana’s deposition
testimony, to the extent it can be credited, is ambiguous about sending
wireless e-mail at the October 26, 1990 demonstration.
We discussed Ponschke’s testimony, Exhibits 1040 and 1045, above.
It relates to the October 26, 1990, demonstration. He testified that wireless
transmission of messages rather than e-mail was demonstrated. Exhibit
1045, 1404:20 – 1405:1. His testimony is consistent with Campana’s memos
and other documentary evidence dated between August 16 and November
19, 1990, all of which discuss messaging, not e-mail.
We have also reviewed Thelen’s declaration (Exhibit 1047) submitted
in response to our earlier opinion. Thelen is a named inventor. At the time
of his declaration he was a paid consultant “regarding any legal matters
which NTP may be involved.” Exhibit 1047, 1 ¶¶ 4-5. He says that between
1990 and 1991 he was working on wirelessly transmitting e-mail originated
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from a processor having an e-mail application to a destination computer.
Exhibit 1047, 2 ¶ 9. He was responsible for developing software to interface
Telefind’s paging device with a computer. Exhibit 1047, 2 ¶ 11. He
testifies that he, Campana and Ponschke conceived of a system for
transmitting e-mail over a wireless network to a pager and extracting the e-
mail from the pager to a computer. Exhibit 1047, 9 ¶ 34. He says that no
later than October 6, 1990, they:
had an operational email extraction program which was
executed on a destination processor as identified in Fig.
10 of our Patents for extracting the email from memory
of the Telefind Messager pager. The email was sent from
an originating processor in an email system, such as
shown in Fig. 8 of the Patents through an interface switch
204 to the Telefind Network and then to the Telefind
Messager from which pager an email was extracted into
the destination processor such as the AT&T Safari
prototype laptop.
Exhibit 1047, 10 ¶ 35. To support his declaration, he relies on data from
diskettes said to be backups of software related to the development of the
BetterBASIC driver for the pager to computer interface. Exhibit 1047, 4-9
¶¶ 16-33. Some of the files on the diskettes are said to be dated before the
date of the references on October 5, 8, and 12, 1990. Another is dated
November 14, 1990. Exhibit 1047, 9 ¶ 33. He goes on to testify that the
work he did during that time period was for a Telefind Messager pager
operating in the Telefind network and connected to a laptop computer.
Exhibit 1047, 12 ¶ 40. He further testifies that, without specifying a date, an
e-mail was originated by a computer in the AT&T mail system, sent through
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an interface switch into Telefind’s wireless network, delivered to a Telefind
pager and the software extracted the e-mail into the laptop. He says that the:
pager received email that originated at the AT&T email
system by someone at ESA using a modem to call the
AT&T brand 3B2 computer which was located at
Telefind's Coral Gables Florida headquarters to originate
an email, as illustrated in Fig. 8 of the Patents. The email
was then transmitted through an interface switch 302 also
located at Coral Gables to a switch of the Telefind
Network and ultimately delivered by the Telefind
Network to the Telefind Messager, at which point both
my or Michael Ponschke's software (running on the
prototype Safari laptop computer) would extract email
from the Messager through the Messager serial port (such
as on page 15 of the Telefind E-Mail Integration) and
into the prototype AT&T Safari laptop that AT&T had
provided to ESA. The email application software resident
on the AT&T prototype Safari laptop computer displayed
the email message on the screen as part of an AT&T
email format.
Exhibit 1047, 12-13 ¶ 41.
Thelen also testifies about another program file on the diskettes said
to be dated October 23, 1990, apparently in preparation for the October 26,
demonstration to AT&T in New Jersey. The program is said to display that
a message has been received by the pager attached to a laptop computer.
Exhibit 1047, 17 ¶ 59. According to Thelen, this program showed that the
integration of the AT&T e-mail system with the Telefind wireless network
had been completed. Exhibit 1047, 18 ¶ 60. Thelen concludes his testimony
stating that prior to October 23, 1990, he had witnessed the successful
operation of the invention to deliver wireless e-mail which originated in the
AT&T e-mail system. Exhibit 1047, ¶ 61.
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We do not credit Thelen’s testimony relating to the specific dates in
which the events are said to have occurred. Thelen is an inventor and, at the
time of his declaration, was a paid consultant for NTP “regarding any legal
matters which NTP may be involved.” He thus has a significant interest in
the outcome of this interference. Additionally, his declaration is dated April,
2009, more than eighteen years after the events on which he testifies. We do
not consider his recollections reliable.
Additionally, Thelen’s testimony on sending e-mail appears to be
contradicted by Ponschke who testified that they demonstrated messaging
rather than e-mail in October, 1990. To the extent Thelen’s testimony and
Ponschke’s testimony are inconsistent, we credit Ponschke’s testimony
because it is consistent with the memos written between August 16 and
November 1, 1990, which discuss messaging rather than e-mail. See
Exhibits 1003-1005, 1007 and 1009.
NTP’s § 1.131 submissions fail to establish that the inventors
conceived or actually reduced to practice a system or process, including
wirelessly sending e-mail prior to the effective date the references.
Conception and actual reduction to practice of sending some of
originating information only through a wired connection
In addition to transmitting e-mail wirelessly, all of NTP’s claims
require that some of originating information be transmitted through a wired
connection and not be transmitted through the RF system. For example,
Claim 1 requires that:
each electronic mail system in the system transmits other
information from one of its plurality of originating processors
through a wireline to at least one of its plurality of destination
processors without transmission using the RF information
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transmission network.
Brief 126.
To prove conception and actual reduction to practice, NTP relies on
“e.g., the AT&T Processor allowed senders and recipients . . . to send and
receive email by wireline . . . .” 1st Supplemental Brief 29:6-8. We are
directed to proposed facts DFs 42 and 92 as support for the assertion. See 1st
Supplemental Brief 29:7. Virtually identical references are made with
respect to each of the other independent claims.
DFs 42 and 92 refer us to specific portions of the following
documents and testimony: (1) Campana’s Declaration, Exhibit 1001, 5 ¶ 11
and (2) The Telefind Integration Document, Exhibit 1002, 3 ¶ 1.
Exhibit 1001 is Campana’s declaration. We do not credit his
declaration for the reasons we have detailed above.
As we also explained above, the Telefind Email Integration document
(Exhibit 1002) is dated after the effective date of the references. It is not
evidence of what was conceived or reduced to practice prior to the date of
the Perkins or Hortensius references.
In any event, we have reviewed the referenced portions of the
documents. The referenced portion of Campana’s declaration relates to
“terrestrial” e-mail systems and problems linking those systems using the
X400 protocol. However, we fail to see any reference to sending some of
the originating information from the email system only by a “terrestrial,”
i.e., wireline link. The referenced portion of Exhibit 1002 discusses the
benefits of using a wireless link in an e-mail system. It makes no reference
to sending an e-mail message only by wireline.
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We have also reviewed Thelen’s declaration (Exhibit 1047) for the
light it might shed on sending some of the originating information only by a
wireline. We were unable to find anything that tends to establish when this
aspect of the rejected subject matter was part of the conception or actual
reduction to practice.
NTP has failed to establish conception and actual reduction to practice
of a system or a process wherein the e-mail system transmits other
originated information to a destination processor in the electronic mail
system through a wireline without transmission using the RF information
transmission network.
Additional Points Raised by NTP
Stout Declaration – Exhibit 1064
As part of its submissions in response to our decision entered
February 18, 2009, NTP submitted Exhibit 1064 a document titled
“Declaration of Donald Stout as President of Patent Owner under 37 C.F.R.
§ 1.131 Regarding Further Conception and Reduction To Practice
Evidence.”
We decline to consider the substance of this document. A review of
the document shows that, for the most part, it is a duplication of NTP’s 1st
Supplemental Brief updated to refer to the 2nd Thelen declaration (Exhibit
1047). It repeats, essentially verbatim, the proposed fact findings found at
pages 2-25 and the “claim mappings” found at pages 25-48 of the 1st
Supplemental Brief. Thus, Exhibit 1064 is actually an unauthorized
additional brief.
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The purpose of a § 1.131 declaration is to present a “showing of facts .
. . to establish reduction to practice . . . or conception of the invention prior
to the effective date of the reference . . . .” 37 C.F.R. § 1.131(b). Stout’s
affirmation that statements made of his own knowledge are true, and all
statements made on information and belief are believed to be true on the
final page of Exhibit 1064 does not convert the suggested fact findings, fact
interpretations and the arguments in the 1st Supplemental Brief into factual
testimony. His “testimony” is predominately surmise, conjecture, inference
and opinion. While arguably appropriate as part of a brief explaining how a
collection of asserted facts supports granting the requested relief by the
tribunal, it is inappropriate as a “showing of facts . . . to establish reduction
to practice . . . or conception of the invention prior to the effective date of
the reference . . . ” as required by § 1.131. We decline to consider it.
Even if we considered the declaration, it would be entitled to little, if
any weight. It appears that Stout has no personal knowledge of facts related
to alleged conception and actual reduction to practice prior to the October
29, 1990, date of the references. Stout’s 1st declaration (Exhibit 1025) does
not describe any events that occurred prior to October 29, 1990. He also
does not attest to involvement in preparing the applications that became the
patents undergoing reexamination prior to November 1990 (Exhibit 1025, 2
¶ 4). Thus, Stout does not appear to be in a position to provide factual
testimony relating to conception and actual reduction to practice prior to
October 29, 1990.
Additionally, to the extent that Stout, as a patent attorney (Exhibit
1025, 2 ¶ 3), is attempting to give opinion testimony as a patent law expert
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on the legal conclusions of conception and actual reduction to practice, we
are not required to give any weight to his opinions on legal issues Cable
Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1025 (Fed. Cir.
1985). Stout’s legal opinions fall far short of providing a “showing of facts”
sufficient to prove conception or actual reduction to practice “of the subject
matter of the rejected claim[s].”
Further, Stout is hardly a disinterested witness. His declaration
(Exhibit 1064) notes that at the time the declaration was submitted he was
the president of NTP. Exhibit 1065, 2:2-4. He and his immediate family,
collectively, are apparently NTP’s largest stockholders. Exhibit 1025, 1 ¶ 1.
We understand that NTP is a patent holding company and that the patents
undergoing reexamination are substantial assets of that company. Because
Stout has a very strong interest in the outcome of these reexamination
proceedings, we also do not give much credit to his testimony.
NTP’s Terminology Mappings
As it did in its 1st Supplemental Brief, NTP refers to what it calls the
“Terminology Mappings” found in Campana’s declaration. 2nd Supplemental
Brief 29-31. NTP says this table was an attempt to correlate “terminology
used in the patent claims with terminology used in the TEI Document . . . .”
2nd Supplemental Brief 29-31.
NTP’s “correlation” is simply not relevant or helpful. NTP’s burden
in making out its § 1.131 case is “to establish invention of the subject matter
of the rejected claim prior to the effective date of the reference . . . .”
37 C.F.R. § 1.131 (emphasis added). The table correlating language of its
disclosure with certain selected language from Exhibit 1002 does not
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establish that the subject matter of the rejected claims is present in Exhibit
1002. The rejected claims are directed to systems and processes having
specific components and steps that must be interconnected or interrelated in
the manner required by the claims. As we noted in our earlier opinion:
[i]t is . . . not helpful that the Telefind Integration
Document may use some of the same terms as
those used in NTP's patent disclosure. It is the
functions performed by each and the interactions
and co-operations between components that are
important, not just whether some of the same terms
are used in both documents.
Mem. Op. and Order 24:25 to 25:2.
The claims require functions and interactions not identified in the
table. Thus, for example, Claim 1 requires that the system transmits other
originated information from an originating processor to a destination
processor in the electronic mail system through a wireline without
transmission using the RF information transmission network. The table does
not mention this limitation. Nor are we able to find a description of it in
Exhibit 1002.
Conclusion
We have reviewed NTP’s arguments and its voluminous evidence.
The evidence does not establish, by a preponderance of the evidence, that
the inventors conceived or actually reduced to practice, (1) the requirement
that originated information in the form of an e-mail be sent wirelessly and
(2) the requirement that each electronic mail system transmit other
information through a wireline without transmission using the RF
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information transmission network. Both elements are required by all of the
rejected independent claims and the claims that depend therefrom.
Nor has NTP established that their evidence of conception and
reduction to practice was sufficient to have rendered the claimed invention
obvious over that evidence. Lastly, NTP’s antedating efforts are directed
only to the independent claims. Even assuming that the applied prior art
have been properly antedated with respect to the claimed invention of the
independent claims, it does not automatically follow that the same is true
with regard to the subject matter of the dependent claims.
NTP has failed to demonstrate prior invention of the subject matter of
the rejected claims.

H. The Rejection of Claims 221-226, 231-238, 240-243, 245-267, and
269-274 under 35 U.S.C. § 112, first paragraph, as without written
description in the specification.
The Examiner finally rejected claims 221-226, 231-238, 240-243,
245-267, and 269-274 under 35 U.S.C. § 112, ¶ 1 as lacking written
description support in the specification.
We affirm-in-part.
Issue
Has NTP shown that the Examiner incorrectly determined that the
specification of the NTP ‘472 patent does not reasonably convey that the
inventors had possession of the invention as claimed in claims 221-226, 231-
238, 240-243, 245-267, and 269-274?

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Principles of Law
The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession at that
time of filing of the claimed subject matter, rather than the presence or
absence of literal support in the specification for the claim language. Vas-
Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991); In re Kaslow,
707 F.2d 1366, 1375 (Fed. Cir. 1983). One shows that one is “in
possession” of the invention by describing the invention, with all its claimed
limitations, not that which makes it obvious. Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); In re Wertheim, 541
F.2d 257, 262 (CCPA 1976).
Disclosure of a species does not always provide sufficient written
description for a broader claim. In re Curtis, 354 F.3d 1347, 1357 (Fed. Cir.
2004)(“we have never held that in all such cases [where there is disclosure
of a species that] … the claim to a genus is adequately described under §
112, ¶ 1.”); Bilstad v. Wakalopulos, 386 F.3d 1116, 1124 (Fed. Cir. 2004)
(“Thus, this court has continued to apply the rule that disclosure of a species
may be sufficient written description support for a later claimed genus
including that species.”); see also Univ. of Cal. v. Eli Lilly & Co., 119 F.3d
1559, 1568 (Fed. Cir. 1997).
The key to resolving the issue lies in what does the disclosed species
tell one with ordinary skill in the art about possession by the inventor of the
entire genus. Predictability among species is a factor to be considered.
Bilstad v. Wakalopulos, 386 F.3d at 1125; In re Curtis, 354 F.3d at 1352-53.
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Another factor to consider is whether the differences between species even
matter. Bilstad v. Wakalopulos, 386 F.3d at 1124.
Findings of Fact and Analysis
Claims 221 recites as follows:
221. A system in accordance with claim 1, wherein:
after reception of electronic mail, by the at least one interface switch,
including said originated information from the electronic mail system,
information is deleted from the electronic mail including the originated
information prior to transmission by the RF information transmission
network.
The Examiner has rejected claim 221 on the basis that the claim sets
forth the deletion of “information” without specific reference to what is
being deleted. The Examiner finds that this deletion of information could
include all information in the email (given that further dependent claims
claim specific types of information to be deleted) and as such there is no
support in the specification for deletion of all the characteristics of email.
(Final Rejection 6).
NTP, on the other hand, states that there the Examiner has applied an
incorrect test. (Brief 96-97).
We agree with the Examiner. Claim 221 includes the deletion of the
“originated information” which, reasonably broadly read, can include all of
the originated information. We do not see where NTP has pointed to
support for such a limitation. Appendix “B” which is a chart showing
support for the claim limitations does not break the claims out on an
element-by-element basis, instead, all of claims 240, 241, 221, 249-251,
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263-265, 273 and 274 are lumped in together with generic citations to the
NTP ‘472 patent. However, none of the quotations provided with reference
to this claim and the limitations argued mention deletion of any information,
let alone all of the originated information.
Accordingly, we affirm this rejection as it applies to claim 221.
Claim 235
Claim 235 reads as follows:
235. A system in accordance with claim 234, wherein said
processes performed by the at least one interface switch includes
varying content of the electronic mail including the originated
information.

The Examiner found that claim 235 sets forth the limitation of varying
content of the electronic mail including originated information without
specific reference to a characteristic of email which is varied. (Final
Rejection 6).
Turning to Appendix B, the support chart, we see that the ‘472 patent
describes the removal of information added by the electronic mail system 1-
N to the information from the originating processor A-N from the stored
information received from one of the gateway switches 14 and adds
information used by the RF transmission network 302 during transmission of
the information received from the originating processor. (Appendix B 9).
We see this as reasonably describing stripping out the header information
and adding in RF transmission information, as noted by the Examiner (Final
Rejection 7), but not a description which would include varying the content
of the originated information such that one of ordinary skill in the art would
recognize that NTP’s inventors invented what is claimed.
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NTP’s argument seems to be that because the Examiner found a
description of header addition, deletion, and encoding, that must also be
support for “varying the content of the electronic mail including the
originated information.” What support NTP has for this conclusory
statement is not apparent to us. NTP cites no evidence other than the
Examiner’s rejection.
Accordingly, on balance, we conclude that NTP has not shown error
in this rejection.
We affirm this rejection as it applies to claim 235.
Claim 240
Claim 240 reads as follows:
240. A system in accordance with claim 1, further comprising:
a communication system including said electronic mail system
having said originating processors, said destination processors and the
at least one gateway switch, and said at least one additional processor
which is not included in said electronic mail system and which
transmits other originated information which is information other than
electronic mail including originated information, wherein:
the at least one gateway switch adds an identification number of
the at least one RF receiver to receive the originated information to
said originated information, transmits said originated information
inputted to said electronic mail system and the identification number
to the at least one interface switch and transmits the other information
from one of the plurality of originating processors through the
wireline to at least one of the plurality of destination processors
without using the RF information transmission network,
said processor sends said other originated information to the at
least one of the plurality of destination processors using the RF
information transmission network but not using the at least one
gateway switch.

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Claim 241 reads as follows:
241. (Previously Presented) A system in accordance with claim
240, wherein said other originated information is transmitted to the at
least one of the plurality of destination processors via the at least one
interface switch.

The Examiner has found that the function performed by the additional
processor in claim 240 is not adequately described. Noting claim 241, the
Examiner finds that claim 240 claims an “additional processor” sending
“other information” to the destination processor via RF network using the
interface, while claim 241 recited only that the additional processor sends
information via the interface switch. (Final Rejection 7). In short, the
Examiner found claim 240 covers the situation where RF transmissions of
other information are sent by the RF network without utilizing an interface,
however stated. As such, it follows that the Examiner’s position is that the
inventors were not in possession of the invention as now claimed.
NTP does not attempt to show where the claim is, in fact, supported in
the specification. Our review of Appendix B does indicate that the ‘472
patent has sections which describe transferring information from outside any
email system into an interface switch. (Appendix B, page 1).
However, the claim under rejection covers any method of transmitting
the other originated information to the destination processors, which is an
infinite genus of methods. NTP has described one method, involving a
specific interface and gateway. Given the wide variety of other methods
which might be used to transfer information between the processors which
the claim scope encompasses, and the lack of disclosure of any alternatives,
we find on balance that the evidence supports the Examiner’s conclusion.
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Accordingly, we affirm this rejection as it applies to claim 240.
Claim 231
Claim 231 reads as follows:
231. (Previously Presented) A system in accordance with claim
230, wherein said at least one gateway switch optionally initiates
transmission of the originated information to the at least one of the
plurality of destination processors via the at least one interface switch
and the RF information transmission network based on at least one of
an address of the originated information and information pre-stored in
a memory of the at least one gateway switch or initiates transmission
of the originated information to a destination processor through the
wireline without using the at least one interface switch and the RF
information transmission network based on at least one of an address
of the electronic mail and the information pre-stored in the memory of
the at least one gateway switch.

The Examiner notes that the claim includes limitations of a system
which “optionally initiates” transmission to a destination processor by
wireline or RF based upon an address in the email or information pre-stored
in the memory of the gateway switch. (Final Rejection 7). The Examiner
has found that the specification does not support for the gateway matching
the address of an electronic mail to a wireline versus RF device. (Id.).
NTP urges that the claim is supported in the ‘472 patent at column 20,
line 60-column 21, line 30 and recites, without explanation, a quotation from
that patent which is reproduced in the ‘611 patent as a footnote.16

16 We note that NTP has shifted to the Board the work of correlating the
NTP ‘611 description to the NTP ‘472 description by using the ‘472 patent
as the source for its citation. We decline to double check behind the scores
of citations; instead we accept that all of the citations are accurate
representations of this material information to the Board.
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NTP argues that the rejection is improper in that the Final Rejection
did not “set forth express findings of fact related to why a person of skill in
the art would not be convinced that the inventor possessed the invention
(Brief 102).
Claim 231 indirectly depends from independent claim 1, and adds the
limitation that the gateway switch optionally (1) initiates transmission of the
electronic mail message to the RF receiver through the interface and the RF
system based on at least one of an address of the RF receiver or information
pre-stored in the memory of the gateway switch, or (2) initiates transmission
of the electronic mail message to a destination processor through the
wireline without using the RF system based on at least one of an address of
the electronic mail message and the information pre-stored in the memory of
the gateway switch. The Examiner indicates that the specification of the
NTP ’611 patent describes the former but not the latter.
It appears that the Examiner has overlooked a pertinent part of the
disclosure of the NTP ’611 patent. With regard to Figures 1-7, the
specification first describes the preexisting prior art in a portion of the
specification labeled as “BACKGROUND ART.” (NTP ’611 patent 1:43 to
18:30). Then, the specification states (NTP ’611 patent 22:65):
The integrated system 100 [the invention] differs from the prior art of
FIGS. 1-7 in that the originating processor, which may be any of the
processors within computing systems #1-#N is provided the option of
transmitting electronic mail (information) to at least one destination
processor which may be any processor A-N within the processing
systems #1-#N by means of an RF information transmission network
302 as described below. (Emphasis added.)

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What is described in the specification subsequent to the above-quoted
text is an addition to the preexisting system, and provides an option for
sending the electronic mail message to an RF information transmission
system. The preexisting system, as described in the specification, directs the
electronic mail message from the originating processor to the destination
processor through a public switch telephone network 12 which uses wired
lines. (NTP ’611 patent 2:23-46).
The Examiner states that none of the descriptions NTP provided in
support of claim 231 refers to determining whether an address is associated
with a wireless or wireline device. (Final Rejection 65-66). The statement
lacks a reasoned analysis of the pertinent portion of the specification quoted
above which refers to adding an option relative to the preexisting wirelined
system. It may be that the description of providing an option reasonably
conveys to one with ordinary skill in the art that the same underlying
information is evaluated or used to make the choice on whether to send the
electronic mail message via wireline or to an RF transmission system. It is
not explained why the determination of whether to make an RF transmission
is not also a determination of whether to make a wired transmission. One
seems to determine the other. The Examiner’s not accounting for seemingly
relevant disclosure undermines the determination that claim 231 is without
adequate written description in the specification. The Examiner has not
made out a prima facie case that the claim feature at issue is not described in
the specification.
Also, according to the Examiner, the gateway switch described in
NTP’s specification does not “initiate” transmission of any electronic mail
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message because all electronic mail messages are really initiated in an
originating processor. The Examiner’s reading of the claim term “initiate” is
unreasonably narrow. Because the gateway switch sends, redirects, or
forwards electronic mail messages it has received from an originating
processor, it does initiate transmission of an electronic mail message, i.e.,
when it forwards or redirects the received message. The gateway switch
determines when it forwards the electronic mail message. When the
message is forwarded, the gateway switch has initiated transmission of the
message. In claim 231, the term “initiates” is used with respect to an
electronic mail message that is forwarded or redirected by the gateway
switch and which is initiated when it leaves the gateway switch, not to a
message that is initiated when it is sent from an originating processor at
another location. The Examiner’s position is unreasonable.
Accordingly, we reverse this rejection as it applies to claim 231.
Claim 241
With regard to claim 241 (Brief 96), while the rejection of claim 240
was based on claim differentiation, claim 241 does not suffer the same issue.
The rejection of this claim is therefore reversed.
The Brief, from pages 103-116 lists several claims without separate
argument. Accordingly, the rejection of those claims is affirmed.
NTP urges that claims 234, 235, 236, 237, 243, 246, and 248 have not
been provided with reasoning as to why they are rejected. We disagree, and
note that the Final Rejection page 9 recites the reason for rejection as related
to a lack of descriptive support for the claimed “processing.” Accordingly,
these arguments are not persuasive of error.
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The rejection of claims 221-226, 232-238, 240, 242-243, 245-267, and
269-274 is affirmed.
The rejection of claims 231 and 241 is reversed.

I. The Rejection of Claims 221-226, 231-238, 240-243, 245-267, and
269-274 under 35 U.S.C. § 112, first paragraph, as lacking an enabling
disclosure.
The rejection of claims 221-226, 231-238, 240-243, 245-267, and
269-274 is reversed.

Issue
Has NTP shown that the Examiner erred in concluding that claims
221-226, 231-238, 240-243, 245-267, and 269-274 are unpatentable under
35 U.S.C. § 112, first paragraph, as lacking an enabling disclosure in the
specification?
Principles of Law
To satisfy the enablement requirement, a patent application must
adequately disclose the claimed invention so as to enable a person skilled in
the art to practice the invention at the time the application was filed without
undue experimentation. Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362,
1371-72 (Fed. Cir. 1999). The issue is not whether any experimentation is
necessary, but whether the amount of required experimentation is undue. In
re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991). The test for enablement is
whether the amount of required experimentation is undue, not substantial. A
technique that is routinely difficult (e.g. substantial) does not mean that the
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experimentation required is undue. Johns Hopkins Univ. v. CellPro, Inc.,
152 F.3d 1342, 1360 (Fed. Cir. 1998). The test is not merely quantitative,
since a considerable amount of experimentation is permissible, if it is merely
routine.
Factors that should be considered in determining enablement include
(1) the quantity of experimentation necessary; (2) the amount of direction or
guidance presented; (3) the presence or absence of working examples; (4)
the nature of the invention; (5) the state of the prior art; (6) the relative skill
of those in the art; (7) the predictability or unpredictability of the art; and (8)
the breadth of the claims. See In re Wands, 858 F.2d 731, 737 (Fed. Cir.
1988).
The written description requirement of 35 U.S.C. § 112 is separate
and distinct from the enablement requirement. Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563 (Fed. Cir. 1991).
Analysis
In the Final Rejection, the Examiner reasoned that:
At least the claim limitations noted above are considered to be
inaccurate of the described invention and require undue
experimentation by one of ordinary skill in the art to make and
use the invention as claimed using the written description which
is required to support such claim limitations. Final Rejection 8.

The Examiner conflates the written description requirement with the
enablement requirement. But they are two separate requirements. A claim
may lack written description support, but one of ordinary skill may be able
to make and use that which is claimed. Conversely, a claim may be
adequately described in the specification, but one of ordinary skill may not
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know how to make or use the claimed invention. For these reasons, the
Examiner’s reasoning is misplaced.
Moreover, the Examiner fails to make any meaningful analysis of all
of the claims it rejects under the enablement requirement. The Examiner
specifically discusses only one claim; claim 240. However, only claim 241
depends from claim 240. The limitations of the remaining claims the
Examiner rejected were not discussed and the Examiner made no showing as
to why those claims are without enabling disclosure in the specification.
Even for claim 240, which was specifically identified, the Examiner
has not made a prima facie case for lack of enabling disclosure for the
claimed invention. Specifically, with respect to claim 240 the Examiner
reasoned that “undue experimentation would have been required to design a
“processor” capable of transmitting to the RF device while dispensing with
the interface switch that is tightly integrated into the Campana network…
Indeed, removing a critical component such as an interface switch from the
Campana network would have immediately broken the network.” (Final
Rejection 8).
The Examiner’s rationale as we understand it is misplaced. The
Examiner’s starting point begins by viewing that which is described in the
NTP specification and not that which is claimed. By doing so, the Examiner
focuses on changes made to the system described in the specification and
how such changes would render the described system inoperable. The focus
should be on the claim language, and whether, given the claim language, one
of ordinary skill in the art would require undue experimentation to make that
which is claimed. The Examiner’ focus on the destruction of the completed
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described system is misplaced. Rather, the Examiner should have addressed
why one of ordinary skill in the art would not have been able to make the
claimed invention. Moreover, it is not apparent that the Examiner took into
account any of the Wands factors listed above. For example, what was
known in the prior art regarding the disputed limitation? How much time
would be required to make the claimed invention? We do not know. The
Examiner has apparently made no such analysis.
Conclusion
NPT has shown that the Examiner erred in concluding that claims
221-226, 231-238, 240-243, 245-267, and 269-274 are unpatentable under
35 U.S.C. § 112, ¶ 1, as lacking an enabling disclosure of the specification.

J. The Rejection of Claims 221-226, 231-238, 240-243, 245-267, and 269-
274 were rejected under 35 U.S.C. § 305 as violating the prohibition
against enlargement of the scope of a patent claim in a reexamination
proceeding.
The Examiner finally rejected claims 221-226, 231-238, 240-243,
245-267, and 269-274 under 35 U.S.C. § 305 for enlarging the scope of the
claimed invention of the patent under reexamination.
The rejection of claims 221-226, 231-238, 240-243, 245-267, and
269-274 is reversed.

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Issue
Has NTP shown the Examiner erred in determining that claims 221-
226, 231-238, 240-243, 245-267, and 269-274 enlarge the scope of an
original issued claim of the NTP ‘611 patent under reexamination?
Principles of Law
“No proposed amended or new claim enlarging the scope of a claim of
the patent will be permitted in a reexamination proceeding under this
chapter.” 35 U.S.C. § 305.
Analysis
The Examiner’s reasoning for the enlargement rejection is similar to
the reasoning provided with respect to the written description rejection. The
following is reproduced from the Examiner’s Final Rejection:
The presentation of the new limitation directed toward
communicating with an RF receiver without using an interface
(as discussed in claim 240, written description rejection above),
‘processing,’ ‘deleting,’ or ‘varying’ of the information of the
electronic mail (as discussed in the claims 221, 234-235, 238,
251, 260-261, 264 written description rejections above), is
considered to improperly broaden the claims (Final Rejection
9).

The Examiner provides no reasoned analysis for rejecting claims 240,
221, or the rest, other than for the same reasons provided with respect to the
written description rejection. Once again, the Examiner conflates statutory
requirements. Here, the Examiner reasons that because a claim is broader
than what is described in the specification, then the claim must also enlarge
the scope of an original claim of the patent. The reasoning is inaccurate.
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The Examiner has made no attempt to compare any of NTP’s original
claims with claim 240, 221, or others and explain how the claims broaden
any original claim. Therefore the rejection of claims 221-226, 231-238,
240-243, 245-267, and 269-274 is without merit.
Conclusion
NTP has shown that the Examiner erred in determining that claims
221-226, 231-238, 240-243, 245-267, and 269-274 enlarge the scope of an
original issued claim of the NTP ‘611 patent under reexamination.

K. The Rejection of Claims 244 and 268 under 35 U.S.C. § 112, second
paragraph as being indefinite.
The Examiner has found that “said electronic email system” lacks
positive antecedent basis and is therefore indefinite. NTP has admitted this.
Br. at 120. Accordingly, this rejection is summarily affirmed.
The rejection of Claims 244 and 268 under 35 U.S.C. § 112, second
paragraph, as being indefinite is affirmed.

L. Summary of the Opinion
I. The rejection of Claims 221-226, 231-238, 240-243, 245-267, and
269-274 under 35 U.S.C. § 112, first paragraph, as without written
description in the specification is AFFIRMED as to claims 221-226, 232-
238, 240, 242-243, 245-267, 269-274; and REVERSED as to claims 231 and
241.
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II. The Rejection of Claims 221-226, 231-238, 240-243, 245-267, and
269-274 were finally rejected under 35 U.S.C. § 112, first paragraph, as
lacking an enabling disclosure is REVERSED.
III. The Rejection of Claims 221-226, 231-238, 240-243, 245-267,
and 269-274 under 35 U.S.C. § 305 as violating the prohibition against
enlargement of the scope of a patent claim in a reexamination proceeding is
REVERSED
IV. The Rejection of Claims 244 and 268 under 35 U.S.C. § 112,
second paragraph as being indefinite is AFFIRMED.
V. The Rejection of Claims 1-6, 8, 10, 12, 14, 16-27, 30-31, 34-35,
38-39, 42-43, 46-51, 53-63, 65, 67-68, 77-80, and 221-274 under 35 U.S.C.
§ 102(b) as being anticipated by Telenor ’89 is AFFIRMED as to claims 1,
6, 16-17, 26-27, 46, 51, 53-63, 65, 67-68, 77-80, and 221-274 and
REVERSED as to claims 2-5, 8, 10, 12, 14, 18-25, 30-31, 34-35, 38-39, and
42-43.
VI. The Rejection of Claims 69-76 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Telenor and May is AFFIRMED.
VII. The Rejection of Claims 1-5, 16-25, 46-50, 53-62, 67-68, and 77-
80 under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Verjinski and Garbee is AFFIRMED.
VIII. The Rejection of Claims 6-15, 26-45, 51-52, and 63-66 under 35
U.S.C. § 103(a) as being unpatentable over the combination of Verjinski,
Garbee, and prior art described in the ‘611 patent is AFFIRMED.
IX. The Rejection of Claims 69-76 under 35 U.S.C. § 103(a) as being
unpatentable over Verjinski, Garbee, and May is AFFIRMED.
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X. The Rejection of Claims 1-5, 16-25, 46-50, 53-62, 67-68, and 79
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Perkins, Hortensius, and Garbee is AFFIRMED.
XI. The Rejection of Claims 69-76 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Perkins, Hortensius, Garbee and May
is AFFIRMED.
XII. The Rejection of Claim 80 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Perkins, Hortensius, and Garbee, and
admitted prior art in the NTP ‘611 patent is AFFIRMED.

AFFIRMED
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Appendix 1

Index of CD disk pictures

Listed in order by picture number

004 Reference C1—front cover blue cover wrapped around
005 Reference C1—front cover blue cover peeled back
007 Reference C1—staples which have been removed
008 Reference C2—front cover
009 Reference C2—binder

010 Reference C2—handwritten notation
011 Reference C1—N.T.H. perforation
012 Reference C2—bar code inside front cover
013 Reference C2—N.T.H. perforation from inside front cover
015 Reference C3—N.T.H. perforation from inside front cover

016 Reference C3—bar code inside front cover
017 Reference C4—binder
018 Reference C4—front cover
019 Reference C4—perforation from inside front cover
020 Reference C4—bar code

021 Reference C4—handwritten notation
022 Reference C4—date stamp
023 Reference C5—front cover
024 Reference C5—binder and handwritten notation on cloth
025 Reference C5—perforation from inside front cover

026 Reference C5—bar code
027 Reference C5—showing binding coming apart
028 Reference C6—front cover
029 Reference C6—date stamps
030 Reference C6—binder and handwritten material

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031 Reference C6—bar code
032 Reference C6—perforation from inside front cover
033 Reference C7—cover
034 Reference C7—date stamp
035 Reference C7—binder and handwritten material

036 Reference C7—perforation from inside front cover
037 Reference C7—bar code
038 Reference C7—showing binder coming apart at top of document
039 Reference C8—handwritten date on top of stamped date
040 Reference C8—cover

041 Reference C8—binder and handwritten material
042 Reference C8—perforations from inside front cover
043 Reference C8—showing lose pages
044 Reference C8—showing lose pages
049 Reference C8—handwritten material and date stamp

050 Reference C3—cover
052 Reference C1—damage and red marks on spines of documents
059 Reference C8—bar code
066 Reference C1—handwritten material
067 Reference C1—date stamp

068 Reference C1—bar code
069 Reference C1—Browne report, Exhibit 1—staple holes
070 Reference C4—trash mark
071 Reference C4—trash mark (pencil pointing to trash mark)
072 Reference C8—pages 82 and 83 UV comparisons

073 Reference C4—UV comparison Reference C4 and Reference C7
074 Reference C3—page 107
075 Reference C3—Annex 1 pages 1 and 2
076 Reference C5—date stamp
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COUNSEL FOR PATENT OWNER:

William H. Wright
Sturm & Fix LLP
206 Sixth Avenue
Suite 1213
Des Moines, IA 50309-4076

Brian M. Buroker
Hunton & Williams LLP
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Washington, DC 20006-1109

COUNSEL FOR THIRD PARTY REQUESTER:

Novak Druce Deluca & Quigg
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