Recent BPAI Opinions on Five NTP Patents Further Illustrate the Effectiveness of Reexamination Strategies

03 December 2009 Publication
Author(s): Benjamin A. Berkowitz Stephen B. Maebius

Legal News Alert: Intellectual Property

A series of opinions relating to patents owned by NTP have recently been issued by the Board of Patent Appeals and Interferences (BPAI) relative to NTP’s successful assertions of five patents against RIM nearly five years ago. Known as the “BlackBerry® litigation,” in which NTP asserted a number of patents against RIM threatening to shut down BlackBerry service to millions of customers, the BPAI’s recent decisions provide valuable insights for companies looking to successfully use reexamination at the USPTO.

Although the BlackBerry litigation received the most press, NTP also is involved in a similar litigation with other carriers such as Sprint, T-Mobile, and AT&T regarding the patents asserted against RIM and additional other patents. While the litigations make their way through the courts, a series of reexamination proceedings also have examined these patents at the USPTO. In five recent decisions from the BPAI, three of the patents from the BlackBerry litigation and two from the other NTP litigation have had their claims rejected by the BPAI as obvious over the prior art. Although some of the rejections have been reversed, the BPAI maintained a series of obviousness rejections over the claims in all five of the patents. These decisions highlight a number of important aspects regarding reexamination practice.

First, reexamination can be an effective tool that companies should consider in addition to litigation. The recent BPAI decisions uphold rejections of claims that were found valid by the district court in the BlackBerry litigation. Despite the district court proceedings, the patent office can independently examine and reject patents using prior art submitted to the USPTO at the start of a reexamination. By strategically utilizing the procedures at the patent office, litigants can take advantage of newly identified prior art or changing patentability standards to invalidate a patent.

Second, after the U.S. Supreme Court ruling in KSR, it is easier to invalidate patents using obviousness arguments in a reexamination context. While some of the rejections were withdrawn by the BPAI, obviousness rejections were maintained over hundreds of claims in the five patents. The post-KSR obviousness standard offers challengers new opportunities to argue how prior art can be combined to invalidate previously granted patents.

Finally, the BPAI decisions highlight the importance of initiating the reexamination proceedings as soon as possible. In the BlackBerry litigation, RIM might have been able to avoid adverse judgments in the courts by an early filing of reexamination requests against the NTP patents. By obtaining a judgment invalidating the patent, RIM would have likely been in a better position when the BPAI decision was appealed to the Federal Circuit.

In a similar case, Hitachi v. Translogic, a patentee successfully sued in district court, but found its patent rejected in a reexamination proceeding. Because the challenger had moved quickly to initiate reexamination proceedings, both appeals came to the Federal Circuit at the same time. The Federal Circuit upheld the reexamination decision based on an obviousness argument under the post-KSR standard. For the district court appeal, the Federal Circuit, in a non-precedential holding, dismissed the case in light of its reexamination decision invalidating the patent.

While successfully utilizing reexamination in contentious situations requires careful evaluation of potential drawbacks upfront, these and other recent rulings highlight the benefits of strategically well-executed reexamination proceedings.

Below are links to the BPAI decisions discussed above:

Patents involved in the BlackBerry litigation:

  • NTP US Patent No. 5,436,960 BPAI reexamination opinion (252 pages)
  • NTP US Patent No. 5,819,172 BPAI reexamination opinion (318 pages)
  • NTP US Patent No. 6,317,592 BPAI reexamination opinion (219 pages)

Additional patents involved in the Sprint, T-Mobile, and AT&T litigations:

  • NTP US Patent No. 5,438,611 BPAI reexamination opinion (251 pages)
  • NTP US Patent No. 5,479,472 BPAI reexamination opinion (214 pages)


Legal News Alert is part of our ongoing commitment to providing up-to-the-minute information about pressing concerns or industry issues affecting our clients and colleagues. If you have any questions about this alert or would like to discuss the topic further, please contact your Foley attorney or the following:

Stephen B. Maebius
Chair, Intellectual Property Department
Washington, D.C.
Benjamin A. Berkowitz
Washington, D.C.

Matthew A. Smith
Washington, D.C.