In Re NTP, Inc.

United States Court of Appeals

for the Federal Circuit

__________________________

(Reexamination No. 90/006,676)

IN RE NTP, INC.,

__________________________

2010-1243

__________________________

Appeal from the United States Patent and Trademark

Office, Board of Patent Appeals and Interferences.

___________________________

(Reexamination Nos. 90/006,494, 90/006,681, 90/007,726)

IN RE NTP, INC.,

__________________________

2010-1254

__________________________

Appeal from the United States Patent and Trademark

Office, Board of Patent Appeals and Interferences.

___________________________

(Reexamination Nos. 90/006,491, 90/006,678, 90/007,723)

IN RE NTP, INC.,

__________________________

2010-1263

__________________________

IN RE NTP 2

Appeal from the United States Patent and Trademark

Office, Board of Patent Appeals and Interferences.

___________________________

(Reexamination Nos. 90/006,533, 90/006,675, 90/007,731)

IN RE NTP, INC.,

__________________________

2010-1274

__________________________

Appeal from the United States Patent and Trademark

Office, Board of Patent Appeals and Interferences.

___________________________

(Reexamination No. 90/006,677)

IN RE NTP, INC.,

__________________________

2010-1275

__________________________

Appeal from the United States Patent and Trademark

Office, Board of Patent Appeals and Interferences.

___________________________

(Reexamination Nos. 90/006,492, 90/006,679)

IN RE NTP, INC.,

__________________________

2010-1276

__________________________

Appeal from the United States Patent and Trademark

Office, Board of Patent Appeals and Interferences.

___________________________

3 IN RE NTP

(Reexamination Nos. 90/006,493, 90/006,680, 90/007,735)

IN RE NTP, INC.,

__________________________

2010-1278

__________________________

Appeal from the United States Patent and Trademark

Office, Board of Patent Appeals and Interferences.

___________________________

Decided: August 1, 2011

___________________________

BRIAN M. BUROKER and OZZIE A. FARRES, Hunton &

Williams, LLP, of Washington, DC, argued for appellant.

With them on the brief were YISUN SONG; and ROBERT A.

KING, of Atlanta, Georgia.

NATHAN K. KELLEY, SCOTT C. WEIDENFELLER and

WILLIAM LAMARCA, Associate Solicitors, United States

Patent and Trademark Office, of Alexandria, Virginia,

argued for appellee. With them on the brief was

RAYMOND T. CHEN, Solicitor.

__________________________

Before GAJARSA, CLEVENGER, and MOORE, Circuit Judges.

MOORE, Circuit Judge.

NTP, Inc. (NTP) appeals from decisions of the United

States Patent and Trademark Office Board of Patent

Appeals and Interferences (Board) affirming the rejec-

tions of claims in United States patent nos. 5,436,960

(’960 patent), 5,438,611 (’611 patent), 5,479,472 (’472

patent), 5,625,670 (’670 patent), 5,631,946 (’946 patent),

5,819,172 (’172 patent), and 6,067,451 (’451 patent). We

IN RE NTP 4

address these seven appeals in a single opinion because

there are common issues throughout. Related Appeal No.

2010-1277 presents unique issues addressed in a separate

opinion. For the reasons set forth below, we vacate-in-

part, reverse-in-part, and remand.

BACKGROUND

The parties agree that the patents involved in this

appeal share substantially identical specifications. 2010-

1243 Appellant’s Br. 2; 2010-1243 Dir. Br. vi. The patents

describe a system for sending information (such as elec-

tronic mail) from an originating processor (i.e., a personal

computer) to a destination processor (i.e., a mobile com-

puter) using an intermediary, an RF receiver. ’960 patent

col.18 ll.32-39. Prior art systems such as the one shown

in figure 1 of the ’960 patent required a portable computer

to connect to a public switched phone line in order to

access electronic messages. Because it was difficult to

locate a telephone jack, the mobile computer user was

often unable to receive electronic mail. Id. col.3 ll.62-66.

The inventors set out to solve this problem by introducing

a Radio Frequency (RF) network 302. Figure 8 illustrates

the invention:

5 IN RE NTP

The individual elements shown in this figure were all

known. For example, it is undisputed that prior art

electronic mail systems used gateway switches to store

and forward electronic mail. Id. col.2 ll.22-30. The pre-

sent invention introduced an interface switch to the

system that communicates between the gateway switch

and the RF network. Id. col.19 ll.11-13. This interface

switch receives an electronic mail message from the

gateway switch and forwards it, via the RF network, to an

RF receiver. Id. col.20 ll.62-63. The RF receiver then

transfers the electronic mail message to the destination

processor (mobile computer) when the destination proces-

sor is activated. The system also allows for the transmis-

sion of electronic mail via the prior art wireline networks.

This is not the first time we have considered this fam-

ily of patents. In NTP, Inc. v. Research in Motion, Ltd.,

418 F.3d 1282, 1289 (Fed. Cir. 2005), an infringement

action, we described the function of the system:

IN RE NTP 6

[The invention’s] particular innovation was to in-

tegrate existing electronic mail systems with RF

wireless communications networks. In simplified

terms, the . . . invention operates in the following

manner: A message originating in an electronic

mail system may be transmitted not only by wire-

line but also via RF, in which case it is received by

the user and stored on his or her mobile RF re-

ceiver. The user can . . . at some later point, con-

nect the RF receiver to a fixed destination

processor, i.e., his or her personal computer [or

mobile computer], and transfer the stored mes-

sage. Intermediate transmission to the RF re-

ceiver is advantageous because it ‘eliminat[es] the

requirement that the destination processor [be]

turned on and carried with the user’ to receive

messages. Instead, a user can access his or her

email stored on the RF receiver and ‘review . . . its

contents without interaction with the destination

receiver.’

(internal citations omitted). During this litigation, Re-

search in Motion, Ltd. (RIM) filed the reexamination

requests that led to this appeal.

Claim 1 of the ’960 patent is illustrative of the claims

at issue in this appeal and describes a “system for trans-

mitting originated information from . . . originating

processors in an electronic mail system to at least one of a

plurality of destination processors” comprising 1) a gate-

way switch in the electronic mail system to receive and

store originated information (the text of an electronic mail

message); 2) an RF network to receive originated informa-

tion from the gateway and transmit it to an RF receiver;

3) an interface switch to facilitate communications be-

tween the gateway and the RF network, wherein the

address of the interface switch is added during transmis-

7 IN RE NTP

sion in the electronic mail system; and 4) wherein the

electronic mail system may also transmit originated

information from an originating processor to a destination

processor over a wireline – apart from the RF network.

Other claims in the appeal are broader and remove the

specific reference to the gateway switch. For example,

claim 1 of the ’670 patent describes an interface for com-

municating between an originating processor and an RF

transmission network.

NTP appeals the Board’s affirmance of a number of

rejections detailed below. We have jurisdiction pursuant

to 28 U.S.C. § 1295(a)(1)(4)(A).

DISCUSSION

NTP raises several issues on appeal. First, it argues

that the Board’s claim constructions of “electronic mail

message” and “electronic mail system” are incorrect.

Second, it claims that the Board erred when it found that

NTP could not antedate several references under 37

C.F.R. § 1.131. Third, it asserts that Telenor, eight vol-

umes of a printed publication titled “Mobile Data Net-

works Description,” is not a prior art reference because it

is not a printed publication under 35 U.S.C. § 102(b).

Finally, it appeals several rejections unrelated to the

construction of “electronic mail message” based on various

prior art references. Each issue is discussed in turn.

I. Claim Construction

The claim terms at issue in these appeals are “elec-

tronic mail” or “electronic mail message” and “electronic

mail system.” 1 In reexamination, “claims . . . are to be

1 Though our prior decision construed “originated

information,” NTP, 418 F.3d at 1282, we did not deter-

mine what constitutes an “electronic mail message.”

Thus, there is no conflict in this case between the Board’s

IN RE NTP 8

given their broadest reasonable interpretation consistent

with the specification, and . . . claim language should be

read in light of the specification as it would be interpreted

by one of ordinary skill in the art.” In re Am. Acad. of Sci.

Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quotation

omitted). Thus, while reviewing claim construction de

novo, Singh v. Brake, 317 F.3d 1334, 1340 (Fed. Cir.

2003), this court must determine whether the Board’s

construction of the term was reasonable, In re Morris, 127

F.3d 1048, 1055 (Fed. Cir. 1997).

We turn first to the Board’s construction of “electronic

mail” or “electronic mail message.” The term “electronic

mail” or “electronic mail message” appears in all eight

patents-in-suit. The Board construed this term to mean a

formatted text message having “a destination address

identifying the persons, places, or objects to which the

message is directed.” 2010-1263 J.A. 20. NTP asserts

that this construction is incorrect and proposes that

“electronic mail message” means a message that has “(1)

the destination address; (2) an identification of the origi-

nating processor; (3) the subject of the message and (4)

the message or message text with the clear result being

that email elements (1) and (2) require a communication

system to have both originating and destination proces-

sors.” 2010-1254 Appellant’s Br. 29-30. NTP’s proposed

construction has wavered between two positions through-

out these appeals: requiring that all the listed fields be

entered and requiring that only the destination address

be entered with the capability for entry of the other three

fields. 2

construction and a prior Federal Circuit construction of

the same term in the same patent.

2 At oral argument, the court asked the parties to

submit a supplemental letter brief to instruct the court as

to which of the appealed issues the court should address if

9 IN RE NTP

The Board’s construction only required the entry of a

destination address. This construction, however, ignores

the claim language and evidence of the understanding of a

person of ordinary skill in the art. The claim language

clearly requires that, in addition to a destination address,

electronic mail messages have the capability for entry of

message content, such as text or an attachment. Further,

other intrinsic and extrinsic evidence shows that a person

of ordinary skill in the art would recognize that an elec-

tronic mail message must also have the capability to enter

an identification of an originating processor and a subject.

While the Board must give the terms their broadest

reasonable construction, the construction cannot be

divorced from the specification and the record evidence.

In re Suitco Surface, 603 F.3d 1255, 1259 (Fed. Cir. 2010).

Based on the evidence, the broadest reasonable con-

struction of “electronic mail message” is a message that

has a destination address and the capability for entry of

message content, an identification of an originating

processor, and a subject. As with any claim construction

analysis, we begin with the claim language. Phillips v.

AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en

banc). The claims of the patents-in-suit require that an

electronic mail message has a destination address. The

parties do not dispute this point. For example, claim 1 of

we were to conclude that the Board’s claim construction

was erroneous. NTP properly submitted its bullet point

list of the additional issues. The PTO’s letter brief, how-

ever, went beyond the request by the court and included

several pages of argument directed to the electronic mail

claim construction issue including citations to portions of

the prosecution history that were not raised in the briefs

or at oral argument. This was improper and beyond the

scope of the court’s request. Therefore, we will not con-

sider these portions of their submission for purposes of

the appeals.

IN RE NTP 10

the ’960 patent states that “the originated information is

transmitted . . . with an address of the at least one of the

plurality of destination processors.” ’960 patent col.49

ll.31-35; see also ’611 patent col.48 ll.51-55 (claiming

“other originated information” having “an address of the

at least one of the plurality of destination processors”);

’946 patent col.53 ll.24-28 (claiming “the originated infor-

mation is transmitted . . . with an address of the at least

one RF receiver to receive the originated information”);

’670 patent col.53 ll.25-29 (same); ’472 patent col.51 ll.18-

20 (claiming a system that “transfers the originated

information to the at least one of a plurality of destination

processors”); ’172 patent col.53 ll.13-15 (claiming “the

electronic mail message . . . includes an address of the one

interface”); ’451 patent col.28 ll.11-13 (claiming “the

broadcast including information contained within the

electronic mail and an identification of each RF receiver

to receive the broadcast”). Although some claims refer to

the address of an “interface” or an “RF receiver,” the

specification explains that “[t]he address of the destina-

tion processor . . . preferably is an identification number

of a RF receiver . . . .” ’960 patent col.22 ll.10-11. Without

a destination address, there would be no electronic mail

message.

Turning to the capability for entry of message text,

claim 1 of the ’960 patent claims “[a] system for transmit-

ting originated information.” ’960 patent col.49 ll.2-3.

This court construed “originated information” to mean

“the message text of an electronic mail message” in the

RIM Litigation. The other patents-in-suit similarly claim

the transmission of originated information. See, e.g., ’611

patent col.47 ll.47-48 (claiming “[a] system for transmit-

ting originated information”); ’946 patent (same); ’670

patent col.53 ll.1-10 (claiming “[a] system for transmitting

information . . . with the information including originated

11 IN RE NTP

information”); ’472 patent col.51 ll.2-3 (claiming “[a]

system for connecting a plurality of electronic mail sys-

tems each transmitting originated information”); ’172

patent col.53 l.2 (claiming “[a] system for transmitting an

inputted message”). Moreover, the specification explains

that “[e]lectronic mail is typically used to send short

informal messages between computers . . . .” ’960 patent

col.1 ll.49-51; see also id. col.28 ll.10-12 (explaining that

figure 11 “summarizes electronic mail message entry

methods for messages (information) originating from

originating processors within an electronic mail system”).

Because the claims of the patents-in-suit include a limita-

tion that originated information be entered in an elec-

tronic mail message, an electronic mail message must

have the capability for a message to be entered.

Based on the claim language alone, it is clear that an

electronic mail message must include a destination ad-

dress and the capability to enter message content, such as

text or an attachment. But we cannot stop with these two

fields, this broad construction would encompass prior art

technologies, such as pager messages, that the inventors

excluded by using the term “electronic mail.” Thus, we

turn to the specification and extrinsic evidence to help

determine the meaning of electronic mail to one of ordi-

nary skill in the art. Electronic mail messages are prior

art to the claimed invention as exemplified by the Back-

ground Art section of the written description. See, e.g.,

’960 patent col.1 ll.43-44 (“The use of computers to send

and receive electronic mail messages is becoming very

popular globally.”). In the Background Art section, the

patent presents a definition of electronic mail as under-

stood by a person of ordinary skill in the art:

Electronic mail systems have several common

items that must be entered in order to originate

and send (format) an electronic message. These

IN RE NTP 12

items include the destination address . . . an iden-

tification of the originating processor . . . the sub-

ject of the message . . . [and] the message or

message text . . . .

’960 patent col.2 l.63-col.3 l.15. While this statement does

not rise to the level of the inventor acting as its own

lexicographer, it does provide insight into the understand-

ing of the person of ordinary skill in the art at the time of

the invention. NTP also presented the testimony of an

expert that echoed this definition:

a formatted text message that is transmitted over

a communication system . . . [that] includes the

following characteristics: (a) a destination address

identifying the person(s), place(s), or object(s) to

which the message is directed; (b) an indication of

the sender (which may be added automatically by

the electronic mail programming); (c) a subject

field (which may be blank); and (d) the inputted

message text.

2010-1243 J.A. 3094-95. Based on this evidence, we hold

that a person of ordinary skill in the art would have

recognized that an electronic mail message must include a

destination address and must have the capacity to include

an address of an originating processor, message content

(such as text or an attachment), and a subject. There is

no contrary record evidence. We cannot agree with the

PTO’s argument that the following specification quote

requires us to affirm the Board’s broad definition:

The invention is user friendly in that the mini-

mum amount of information that must be pro-

vided to initiate the transmission of electronic

mail from an originating processor to at least one

destination processor is an identification of the

destination processor and information indicating

13 IN RE NTP

that the message is to be sent by the RF informa-

tion transmission network.

’960 patent col.19 ll.20-26 (emphases added). That speci-

fication quote does not state that “electronic mail” is

anything with a destination address. Rather it explains

that a destination address is the minimum amount of

information necessary to initiate transmission. This

portion of the specification is directed to the requirements

and processes for transmitting the message and this quote

is discussing what portion of the electronic mail is neces-

sary for the initiation of the transmission. We do not

agree with the PTO that this defines electronic mail. We

hold that an electronic mail message is a message that

includes a destination address and the capability for entry

of message content, an identification of an originating

processor, and a subject. Therefore, because the Board’s

construction of “electronic mail message” is incorrect, we

vacate the Board’s decisions as to the invalidity of the

patents-in-suit and remand for the Board to apply the

correct claim construction to the prior art.

Next, the Board construed “electronic mail system” to

mean “[a] processor placing an electronic mail message on

a transmission mechanism capable of delivering the

message to the intended recipient . . . .” 2010-1263 J.A.

19. The Board’s construction “does not require a plurality

of processors.” Id. NTP argues that this construction is

incorrect. We agree.

The claims themselves require a “plurality” of proces-

sors in an electronic mail system. See, e.g., ’960 patent

col.49 ll.2-4 (claiming “a plurality of originating processors

in an electronic mail system” (emphasis added)); ’611

patent col.47 ll.46-48 (same); ’472 patent col.51 ll.3-4

(same); ’670 patent col.53 ll.3-4 (same); ’946 patent col.53

ll.3-4 (same); ’172 patent col.53 ll.2-5 (same); ’451 patent

IN RE NTP 14

col.27 ll.7-9 (claiming “a system comprising a communica-

tion system which transmits electronic mail, inputted to

the communication system from a plurality of proces-

sors”). Moreover, the specifications of the patents-in-suit

describe a system having a plurality of processors. See,

e.g., ’960 patent Abstract (“A system for transmitting

information from one of a plurality of originating proces-

sors.”); id. col.20 ll.25-26 (“An electronic mail system for

transmitting information from one of a plurality of origi-

nating processors . . . .”); id. col.20 ll.29-31 (“[S]toring the

information received from one of the at least one originat-

ing processors . . . .”); id. col.20 ll.42-43 (“[W]herein the

information from the one of the plurality of originating

processors is transmitted . . . .”); id. col.21 ll.10-13 (“The

receiving interface switch stores information . . . that is

received from a plurality of originating processors . . . .”);

id. col.21 ll.49-50 (“The number of originating processors

is greater than the number of interface switches.”).

Based on the claims and the specification, an “elec-

tronic mail system,” as claimed, must contain a plurality

of originating processors. Thus, the broadest reasonable

construction of “electronic mail system” is the construc-

tion provided by this court in the previous RIM Litigation:

“A type of communication system which includes a plural-

ity of processors running electronic mail programming

wherein the processors and the electronic mail program-

ming are configured to permit communication by way of

electronic mail messages among recognized users of the

electronic mail system.” NTP, 418 F.3d at 1295.

II. Swearing Behind: 37 C.F.R. § 1.131 Affidavits

and Evidence

One issue common to several appeals is whether NTP

successfully antedated a number of references under 37

C.F.R. § 1.131. We review the Board’s fact-findings for

15 IN RE NTP

substantial evidence. In re Gartside, 203 F.3d 1305, 1312

(Fed. Cir. 2000). The critical date is October 29, 1990. In

determining the date of reduction to practice, the Board

focused on two aspects of the invention that it found to be

critical to establishing an earlier invention date: “1) the

requirement that 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.” 2010-1243 J.A. 193. NTP submitted inventor

affidavits from Thomas Campana and Gary Thelen that

allege a reduction to practice date prior to the critical

date.

A party seeking to antedate a reference based on re-

duction to practice must present evidence of the actual

reduction to practice of the invention prior to the effective

date of the reference. 37 C.F.R. § 1.131(b). An inventor

cannot rely on uncorroborated testimony to establish a

prior invention date. Id. It has long been the case that

an inventor’s allegations of earlier invention alone are

insufficient – an alleged date of invention must be cor-

roborated. Medichem S.A. v. Rolabo, S.L., 437 F.3d 1157,

1170 (Fed. Cir. 2006); Woodland Trust v. Flowertree

Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998).

“[E]vidence is assigned probative value and collectively

weighed to determine whether reduction to practice has

been achieved.” Medichem, 437 F.3d at 1170. “Suffi-

ciency of corroboration is determined by using a ‘rule of

reason’ analysis, under which all pertinent evidence is

examined when determining the credibility of an inven-

tor’s testimony.” Id.

To corroborate the inventors’ testimony, NTP submit-

ted several pieces of evidence. First, it submitted the

Telefind E-Mail Integration document (Telefind). NTP

argued that Telefind Revision 0, dated October 6, 1990

IN RE NTP 16

(prior to the critical date), would corroborate the inven-

tor’s testimony. In reviewing the Telefind document, the

Board noted that the only submitted version, Revision 2,

had a date of April 9, 1991, long after the critical date of

October 29, 1990. The Board thus held that NTP could

not rely on the Telefind document to corroborate the

Campana or Thelen testimony.

We agree with the PTO that substantial evidence

supports the Board’s refusal to accord the Telefind docu-

ment the date of Revision 0. The only submitted version

of the Telefind document is Revision 2, which is dated

April 9, 1991. 2010-1243 J.A. 1540. NTP argues that

Revision 0 and Revision 2 have all the same key compo-

nents. Thus, NTP explains that what is disclosed in

Revision 2 should be treated as present in Revision 0. To

substantiate this claim, NTP relies upon the testimony of

the same two inventors, Campana and Thelen. Mr.

Campana states that “I have determined from a complete

review of the documents . . . that the description of the

system in the Telefind Email Integration Document which

was revision 0 was written by me and was not substan-

tially changed in the later revisions 1 and 2 . . . .” 2010-

1243 J.A. 1524-25. Thelen testified similarly. Id. at 6819-

20. The problem with NTP’s argument is that it is circu-

lar. The affiants seek to corroborate their testimony with

the Telefind document, but, at the same time, attempt to

corroborate the date of the document with their testi-

mony. It would be strange indeed to say that Mr. Cam-

pana, who filed the R.131 affidavit that needs

corroborating, can by his own testimony provide that

corroboration. We agree with the PTO that substantial

evidence supports the Board’s determination that the

earliest reliable date for the Telefind document is April 9,

1991, the date of Revision 2.

17 IN RE NTP

NTP also relies on four letters written by Mr. Cam-

pana and a meeting report by Mr. Andros that allegedly

detail the patented invention as well as two demonstra-

tions of the patented technology. An August 16, 1990

letter from Mr. Campana describes attempts to integrate

the technology with AT&T’s networks. 2010-1243 J.A.

1562-63. This memo describes a “pager and a hand held

messager” and describes the technology as “network

messaging.” Id. Later, on August 31, Mr. Campana

composed a letter using similar language – “radio messag-

ing” and “Messager pager.” Id. at 1565-70. Again, on

September 24, Mr. Campana wrote describing “one way

radio paging,” “one-way messaging,” and mentioning that

AT&T would like to demonstrate the technology at the

Comdex show. Id. at 1572-73. A meeting report prepared

by Mr. Andros describes an October 26, 1990 demonstra-

tion of the technology. Id. at 1583-84. This report de-

scribes the use of a pager as a wireless modem. Id.

Finally, a November 21, 1990 letter from Mr. Campana

describes the Comdex demonstration on November 10.

This letter states that, at the Comdex demonstration, the

system transmitted “E-mail.”

The Board found that this evidence did not corrobo-

rate the testimony of the inventors. The Board noted that

the Campana letters prior to the critical date only refer to

“messaging” and never mention electronic mail. The

Board found these letters “inconsistent” with Campana’s

testimony that he was working on an electronic mail

implementation during the relevant time period. 2010-

1274 J.A. 201. Further, the Board found that Campana’s

testimony and Mr. Andros’ meeting report regarding the

October 26, 1990, demonstration were “ambiguous” be-

cause neither stated that NTP demonstrated electronic

mail. 2010-1274 J.A. 218. In coming to this conclusion,

the Board relied on the testimony of the third inventor,

IN RE NTP 18

Michael Ponschke, from prior litigation involving the

patents. In an initial deposition, Ponschke testified that

the October 26, 1990 demonstration had included elec-

tronic mail. But in his later trial testimony, he recanted

this statement, saying that “I apparently misspoke, [ ] we

did not demonstrate e-mail. We demonstrated messag-

ing.” 2010-1274 J.A. 4280-81. The Board found that Mr.

Ponschke’s later testimony was consistent with the three

pre-critical date letters from Mr. Campana and showed

that the inventors did not demonstrate electronic mail

prior to the critical date.

NTP argues that all of these documents taken to-

gether show that, prior to October 29, 1990, the inventors

had reduced to practice the patented invention. It argues

that, just days after the critical date, it demonstrated the

fully complete invention in public at the Comdex demon-

stration. Further, it argues that these letters conclusively

show that it had developed the technology to demonstrate

to AT&T on October 26, 1990, three days prior to the

critical date. NTP argues that the testimony of Mr.

Ponschke should not outweigh this evidence.

This court does not reweigh evidence on appeal, but

rather determines whether substantial evidence supports

the Board’s fact findings. We agree with the PTO that

substantial evidence supports the Board’s finding that

these documents do not evidence a reduction to practice

prior to the critical date. Mr. Ponschke’s testimony is

particularly damaging to NTP’s case. He testified that

“we did not demonstrate e-mail. We demonstrated mes-

saging.” 2010-1274 J.A. 4280-81. This is consistent with

the language used in all of the documents prior to October

29. They simply referred to “messaging” or to a “pager.”

It was not until November 21, after the critical date, that

any document stated that the system transmitted “E-

mail.” The November 21 letter details the demonstration

19 IN RE NTP

at the Comdex show of the transmission of electronic

mail. The problem for NTP is that November 10, the date

of the Comdex demonstration, is after the critical date

(October 29). Proving a November 10 demonstration does

not establish reduction to practice prior to October 29.

Thus, substantial evidence supports the Board’s determi-

nation that these documents do not corroborate the testi-

mony of Mr. Campana and Mr. Thelen. None of the

documents describes the transmission of electronic mail

prior to the critical date and the testimony of Mr. Pon-

schke provides sufficient evidence to support the Board’s

findings.

NTP also relies on a number of software files (ATT

files) to corroborate the testimony of Mr. Thelen. Mr.

Thelen testified that the ATT files include the code that

was demonstrated in October 1990. He states that “the

very first ATT.LST file generated from the ATT file that

is dated October 5, 1990 did in fact extract electronic

mails from the pager and deliver them to the AT&T

laptop.” 2010-1274 J.A. 6230. The Board rejected

Thelen’s testimony regarding the ATT files. The Board

stated “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.” 2010-1274 J.A. 221.

We agree with the PTO that substantial evidence

supports the Board’s determination regarding the ATT

files and Mr. Thelen’s testimony. Although NTP argues

that these files are “fully operational source code,” NTP

fails to point to any specific portion of the files that shows

that the inventors transmitted electronic mail wirelessly

prior to the critical date. Further, Thelen admits that he

could not demonstrate the transmission of electronic mail

using this supposedly fully functional code. 2010-1274

J.A. 6233 (“I also ran the . . . files using my current com-

IN RE NTP 20

puter . . . however, because I had no way of entering

messages to a pager, the screen did not display any e-

mails.”). Instead, NTP relies on the existence of these

files as corroboration of the testimony that the inventors

demonstrated the patented technology. Again, this falls

into the circular logic of using the files to corroborate the

testimony and the testimony to corroborate the files. The

Board did not err in finding that the software files did not

overcome the testimony of Mr. Ponschke.

As an alternative argument for reversal, NTP argues

that the Board’s entire decision is tainted because the

Board rejected the testimony of Mr. Campana and Mr.

Thelen only because “(1) the declarants are interested in

the outcome of the reexamination, and (2) many years had

passed since the relevant events occurred.” 2010-1275

Appellant’s Br. 20. NTP argues that because R. 131 only

allows declarations from inventors or patent owners, the

declarant will always have an interest. Further, it argues

that reexamination will often occur years after invention,

so the Board effectively prevents anyone from relying on

testimony to antedate a reference.

NTP is correct that the Board stated that it would not

credit the testimony of Mr. Campana and Mr. Thelen due

to their interest in the invention and the time that passed

since the events in question. See, e.g., 2010-1274 J.A. 221.

Contrary to NTP’s assertion, as shown above, the Board

considered every piece of allegedly corroborative evidence

and came to the reasoned decision that it did not corrobo-

rate the testimony of the inventors.

Finally, NTP argues that the Board erred by applying

a different claim construction to the R. 131 issue than it

did to the prior art references. NTP argues that, when

considering its evidence of antedating, the Board refused

to consider “messaging” as synonymous with electronic

21 IN RE NTP

mail. NTP argues that, contrary to this construction, the

Board credited “messaging” prior art as teaching the

electronic mail limitations of the claims. It argues that

this cannot be proper and that we should require the

Board to apply the same construction to both issues.

We agree that it would be improper to apply one claim

construction to evidence of date of invention and a differ-

ent one in assessing the prior art references. Though the

Board may have erred in its construction of electronic

mail message, NTP has failed to swear behind as its

corroborative evidence does not support the transmission

of electronic mail prior to the critical date even under its

own construction, which we have adopted today. In

assessing the evidence to antedate the references, the

Board concluded that the evidence did not corroborate the

inventors’ claim of reduction to practice of the electronic

mail system prior to the critical date. We conclude that

this determination is supported by substantial evidence.

III. Telenor

The Board affirmed rejections of claims in several of

the patents at issue based on Telenor. In addition to

arguing that Telenor does not anticipate the claims, NTP

argued to the Board that Telenor is not a “printed publi-

cation” under 35 U.S.C. § 102(b). It based this on two

distinct arguments: that Telenor is not authentic and that

it was not reasonably accessible.

Telenor came to the PTO by way of the third-party re-

examination requester. The requester apparently located

the documents in the Norwegian University of Science

and Technology (Library) in Trondheim, Norway. Each of

the volumes of Telenor was marked as received and

catalogued on a date more than one year prior to the

critical date of the patents at issue.

IN RE NTP 22

The Board considered a letter from the Director of the

Library that detailed its procedures for receiving, date

stamping, and cataloguing documents at the time the

Library received Telenor. 2010-1263 J.A. 4463-69. The

Director stated that the Library date stamped all docu-

ments upon receipt. Id. at 4464. The Library then classi-

fied the references under an appropriate subject matter

category. The Director explained that the Library classi-

fied Telenor under the subject headings “computer net-

works” and “communication protocols.” Id. The Library

loaded information about the reference into BIBSYS, an

online catalogue. BIBSYS allowed searching by author,

title, classification number, subject heading, and other

fields. Id. According to the Library, Telenor would have

been available for search shortly after its arrival at the

Library.

The Board also considered a declaration of Petter

Sorsdahl, a Swedish patent attorney, submitted by the

reexamination requester. Mr. Sorsdahl testified that he

believed that a search in 1989 at the Library would have

uncovered Telenor. Mr. Sorsdahl testified that the inven-

tion of the patents at issue was “mobile data networks”

and “mobile telephony.” 2010-1243 J.A. 146. Thus, the

Board concluded, based on Sorsdahl’s testimony, that

because the invention of the patents is similar to the title

of Telenor and its classifications at the Library, one of

ordinary skill in the art would locate Telenor after rea-

sonable search.

The Board considered the declaration of a forensic

document investigator, David Browne, submitted by NTP.

Mr. Browne analyzed Telenor for evidence that would

suggest the documents may not be authentic. He focused

primarily on three pieces of evidence. First, he testified

that certain documents had multiple staple holes indicat-

ing that they were disassembled at some point. He stated

23 IN RE NTP

that this means that it is “possible” that the references

were taken apart and put back together. 2010-1263 J.A.

6825-27. Second, Mr. Browne testified that Telenor

included pages that came from different “batches” of

paper. Id. J.A. 6828. Third, Mr. Browne testified that on

several pages, the header on a page appeared to be differ-

ent from the text on the same page. He testified that this

meant that someone could have altered the text of the

pages. Id. at 6829.

Finally, the Board considered the declaration of Dr.

Rhyne, who testified that one skilled in the art would not

have located Telenor through a reasonable search. Spe-

cifically, Dr. Rhyne posited that the field of the invention

of the Campana patents is “electronic mail” and thus one

skilled in the art would not have searched for “computer

networks” or “communications protocols.” 2010-1243 J.A.

3088-89.

The Board held that Telenor is a printed publication

under 35 U.S.C. § 102(b). It noted that this case is similar

to In re Hall, 781 F.2d 897 (Fed. Cir. 1986) where a single

thesis catalogued and shelved in Germany was a “printed

publication” under § 102(b). The Board explained that the

proponent of the reference must establish a prima facie

case that it is prior art, and then the burden shifts to the

patent owner. Regarding authenticity, the Board afforded

much weight to the letter from the Library detailing its

procedures for receiving, date-stamping, and cataloguing

references. The Board noted that the date stamp showed

that the documents were deposited with the Library

before the critical date. The Board then found that the

testimony of Mr. Browne did not establish that the docu-

ment was altered after the critical date. Although the

Board noted that it “in no way suggest[ed] that [Browne]

is not telling us the truth about his examination,” it

nonetheless found nothing in his testimony to overcome

IN RE NTP 24

the evidence of authenticity. 2010-1243 J.A. 183-84. It

noted that Browne only testified that “something may not

be right” with Telenor, but was unable to show any evi-

dence that it was altered after the critical date.

Regarding accessibility, the Board found that Dr.

Rhyne defined the field of the invention too narrowly.

The Board explicitly credited the testimony of Mr. Sors-

dahl over that of Dr. Rhyne, agreeing that the terms that

the Library used to classify Telenor were relevant to the

claimed invention and that Dr. Rhyne was too narrow in

his opinion that only a classification under “electronic

mail” would be sufficient.

A. Authenticity

Consistent with the approach of our sister circuits, we

hold that the authenticity of a document is a question of

fact. See, e.g., United States v. Vidacak, 553 F.3d 344, 349

(4th Cir. 2009); United States v. Weiland, 420 F.3d 1062,

1071 n.6 (9th Cir. 2005); United States v. Carson, 969

F.2d 1480, 1500 (3d Cir. 2000). Therefore, we review the

Board’s fact-findings regarding authenticity for substan-

tial evidence.

We hold that substantial evidence supports the

Board’s finding that the Telenor documents are authentic.

We agree with the Board that the letter from the Library

is extensive and complete. Further, we have held in the

past that “[c]ompetent evidence of general library practice

may be relied upon to establish an approximate time

when a thesis became available.” Hall, 781 F.2d at 899.

This case is distinguishable from In re Bayer, 568 F.2d

1357, 1362 (CCPA 1978), where there was no evidence

that the received document was catalogued or shelved.

The Board’s determination regarding Mr. Browne’s af-

fidavit is supported by substantial evidence. Mr.

25 IN RE NTP

Browne’s testimony suggests that the documents may

have been taken apart and reassembled. For example,

Mr. Browne stated that “I noted there were slight abra-

sions on the paper . . . [t]hese marks are clear signs that

an implement was used to remove staples from the

page/s.” 2010-1263 J.A. 6826. Mr. Browne also stated

that there were abnormalities with page headers that

indicated that the header and the page text may have

been created at different times. Id. at 6829 (stating that

“[t]he disparity between this header on each page and the

rest of the text indicates that the contents of the page

have been copied onto paper on which a copy of the header

already exists”). Further, Mr. Browne observes that “a

number of pages within each book were from different

batches of paper.” Id. at 6828.

This testimony may support a finding that the docu-

ment was taken apart and reassembled with staples or

that some of the pages may have been photocopied and

inserted. But there is an essential element missing from

Mr. Browne’s analysis: he does not show any evidence

that the alterations took place after the document was

deposited with the Library or after the critical date. His

testimony only indicates that the documents may have

been altered. For example, Mr. Browne states that some

pages came from different “batches” of paper, but he fails

to indicate that this provides any information about the

timing of any alterations. Just because a different batch

of paper was used does not mean that an alteration neces-

sarily occurred after the document was deposited with the

Library. Likewise, the disparate headers may seem

curious, but they give no indication as to the date of any

alleged modification. NTP had the burden to prove that

the document was not authentic. The Board’s conclusion

that NTP has failed to establish that any modifications

IN RE NTP 26

occurred after the documents were deposited in the Li-

brary is supported by substantial evidence.

In addition to its failure to show that modifications to

the document were after the date of deposit with the

Library, NTP further failed to show that the modifications

were relevant. Specifically, NTP does not list all the

pages or portions of pages of Telenor that were allegedly

altered. This makes it impossible to determine whether

the allegedly altered pages were the ones that disclosed

the matter relied upon by the Board. For these reasons,

we agree with the PTO that the Board did not err in

finding Telenor authentic.

B. Accessibility

Whether a reference is publicly accessible is a ques-

tion of fact that we review for substantial evidence. In re

Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004) (hold-

ing that whether a reference is publicly accessible is

based on the “facts and circumstances surrounding the

reference’s disclosure to members of the public”). A

reference is publicly available if it was “disseminated or

otherwise made available to the extent that persons

interested and ordinarily skilled in the subject matter or

art exercising reasonable diligence, can locate it.” Kyocera

Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350

(Fed. Cir. 2008).

The Board’s determination that Telenor was publicly

accessible is supported by substantial evidence. The

Board is correct that the patent specification is drawn to a

wider field than simply “electronic mail.” The title of the

document itself, “Mobile Data Network Description,” is

descriptive of the subject matter of the patents and the

problem the patents purport to solve – the transmission of

data to mobile computers. The subject matter categories

27 IN RE NTP

Telenor was assigned by the Library, “computer net-

works” and “communication protocols,” are similarly

indicative of the subject matter of the patents at issue.

These facts alone amount to substantial evidence that

Telenor was available to one of ordinary skill in the art

exercising reasonable diligence. Finally, we will not set

aside the Board’s determination that Mr. Sorsdahl’s

opinion was more credible than Dr. Rhyne’s regarding the

correct field of invention. Mr. Sorsdahl stated that one of

ordinary skill in the art would search for the term “mobile

data network” when looking into the technology of the

patented invention and thus would have uncovered

Telenor.

The Board’s factual determinations are supported by

substantial evidence. In light of those facts, we agree

with its legal conclusion that Telenor is a “printed publi-

cation” under § 102(b).

IV. Prior Art Rejections

In the preceding sections, we have addressed NTP’s

arguments regarding general issues that affect a number

of patents at issue. Although we must remand based on

our claim construction of “electronic mail [message],”

there are several issues relating to specific prior art

references that we can resolve because they are unrelated

to this construction. Anticipation is a question of fact as

is the question of what a reference teaches. Para-

Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d 1085, 1088

(Fed. Cir. 1995); In re Baxter Travenol Labs., 952 F.2d

388, 390 (Fed. Cir. 1991). Obviousness is a question of

law that we review de novo with underlying factual find-

ings. See KSR Int’l Co. v. Teleflex, Inc., 500 U.S. 398, 427

(2007). We address each basis of rejection in turn.

IN RE NTP 28

A. Applicant’s Admitted Prior Art in view of Harrison

In several of the patents at issue, the Board affirmed

rejections of claims over the applicant’s admitted prior art

(AAPA) in view of U.S. patent no. 5,181,200 (Harrison)

and other references. The relevant AAPA is best de-

scribed in reference to ’960 patent figure 1:

The Board found that elements marked #1 and #3 in

this figure along with the gateway switches constitute an

electronic mail system. The Board further found that the

Host CPU of element #2 constitutes an “interface” con-

necting the electronic mail system to the LAN, an “infor-

mation transmission network.” The Board acknowledged

that the AAPA does not disclose an interface with an RF

network—indeed, the AAPA would then anticipate the

claims. For this limitation, the Board relied on Harrison.

The Board found that Harrison discloses a system that

incorporates an RF network into an existing LAN. The

29 IN RE NTP

Board held that it would have been obvious to incorporate

the RF network of Harrison into element #2 of the AAPA

with the Host CPU acting as the interface.

NTP argues that the Host CPU in Box #2 is not the

claimed “interface” between an electronic mail system and

an RF information transmission network. Rather, NTP

argues that the Host CPU is part of the electronic mail

system itself. NTP also argues that even if the Host CPU

could be an “interface,” Harrison does not cure the fact

that the AAPA does not disclose an RF information

transmission network. The Board stated that this modifi-

cation would “improve the RF subsystem of the [AAPA] by

allowing portable units to connect without the need to dial

in to a BX or PSTN.” 2010-1263 J.A. 97-98. NTP argues

that this reasoning makes no sense because the portable

computers of the AAPA specifically connected via a phone

line.

As an initial matter, our construction of “electronic

mail [message]” is irrelevant to this basis for rejection

because the AAPA is the “Background Art” of the subject

specifications that includes the four-item description of

electronic mail. Further, the AAPA clearly teaches the

other limitations of the claim with the exception of the RF

network. Harrison teaches the use of an RF network to

deliver data. Thus, the Board’s findings regarding the

content of the references are supported by substantial

evidence. However, we hold that, as a matter of law, the

claims would not have been obvious to one of ordinary

skill in the art based on the combination of the AAPA and

Harrison. The Board improperly relied on hindsight

reasoning to piece together elements to arrive at the

claimed invention. “Care must be taken to avoid hind-

sight reconstruction by using ‘the patent in suit as a guide

through the maze of prior art references, combining the

right references in the right way so as to achieve the

IN RE NTP 30

result of the claims in suit.’” Grain Processing Corp. v.

American-Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir.

1988) (quoting Orthopedic Equip Co. v. United States, 702

F.2d 1005, 1012 (Fed. Cir. 1983)). Given any network, we

could likely carve out a possible “interface” and combine it

with Harrison to hold that the addition of a RF informa-

tion transmission network would have been obvious. This

type of piecemeal analysis is precisely the kind of hind-

sight that the Board must not engage in. The Board’s

position is further weakened by the fact that the AAPA

already discloses an RF network that connects portable

computers to the system. ’960 patent col.2 ll.1-4. Thus,

adding an RF network to element #2 in the figure would

render the RF network connecting the portable PCs in

figure 1 superfluous. Because it is based on improper

hindsight reasoning, we reverse the Board’s rejections

based on the AAPA in view of Harrison.

B. Verjinski

The Board affirmed the rejections of a number of

claims based on Verjinski, “PHASE, A Portable Host

Access System Environment” 3 IEEE Military Communi-

cations Conference 1989, 0806-09 (October 18, 1989)

(Verjinski). Verjinski discloses a system for connecting

wireline “remote hosts” with portable computers over a

wireless link called Portable Host Access System Envi-

ronment (PHASE). Verjinski at 806; 2010-1263 J.A. 1681.

Verjinski specifically contemplated use of the system in

sending electronic mail using SMTP between two nodes.

Id. The interface between the wireline and portable hosts

is called the Portable Host Access Component (PHAC).

Id. The system is shown in figure 1:

31 IN RE NTP

When a user at a portable computer (shown at the top of

this figure) wishes to interface with the system, the user

dials into the PHAC. The PHAC assigns a temporary IP

address to the portable computer and allows the computer

to communicate with the Internet. Verjinski explicitly

discloses the use of a cellular telephone network to con-

nect the PHAC to the portable computers.

NTP argues that Verjinski fails to teach the transmis-

sion of electronic mail. NTP also argues that Verjinski’s

PHAC is not an “interface” as claimed. It argues that the

PHAC does not connect to an RF information transmis-

sion network or an “electronic mail system,” but to “a

single computer.”

IN RE NTP 32

On remand, the Board must determine whether Ver-

jinski teaches electronic mail under our construction.

NTP’s remaining arguments regarding the disclosure of

Verjinski are without merit. We agree with the Board

that the PHAC corresponds to the claimed “interface”

because it connects to more than just a single computer.

There is substantial evidence from the reference itself

that “Verjinski discloses that the design of the PHAC

allows eight [ ] connections to portable hosts.” 2010-1263

J.A. 80. These portable hosts can amount to an “elec-

tronic mail system” under our construction from NTP

assuming that they transmit “electronic mail” as con-

strued herein. Thus, the PHAC of Verjinski satisfies the

claimed “interface” limitation.

The claims at issue also require that the system

transmit originated information over both the RF network

and over a wireline network. Specifically, claim 1 of the

’670 patent requires that:

other originated information originating from one

of the originating processors is transmitted . . .

without using the RF information transmission

network to at least one of the destination proces-

sors.

Although Verjinski does not disclose communication

without using the RF link, the Board held that “[i]t is

rudimentary and mere common sense that if a remote

host has reason to communicate with a user who is using

a portable computer, it may similarly have reason to

communicate with a user who is operating a wirelined

computer.” 2010-1263 J.A. 84.

If we agree with the PTO, this limitation of the claims

is essentially irrelevant because any computer user may

want to transmit to both wireline and wireless nodes. For

other references discussed below, such as Perkins, the

33 IN RE NTP

Board found it necessary to combine with a reference like

Hortensius to teach this limitation. The same logic

should apply to Verjinski. While this limitation might

have been obvious over Verjinski in view of another

reference, we cannot agree that it would have been obvi-

ous over Verjinski alone. Thus, the Board erred in this

holding.

C. Telenor

Telenor describes a “Mobile Data Network” that is

“capable of transferring messages between fixed terminals

and mobile stations.” The following figure shows the

system elements 3 :

The link between the BS and the MS is an RF network.

Although this figure shows a single set of processors in

the system, each MDX handles a number of fixed termi-

nals. Similarly, each MDX connects to a number of net-

work adapters which in turn connect to a number of base

stations that connect to a number of mobile stations. The

system provides operation between up to 5000 fixed

terminals and up to 100,000 mobile stations using 50

MDXs.

One of the functions of the MDX is a “mailbox ser-

vice.” The reference explicitly discloses use of the X.400

protocol. The MDXs communicate with a message han-

dling system via a Message Handling System Internet-

working Unit (MIWU). The MDXs are key to providing

3 FT = Fixed Terminal; MDX = Mobile Data Ex-

change; NA = Network Adapter; BS = Base Station; and

MS = Mobile Station.

IN RE NTP 34

internetworking between fixed stations and mobile sta-

tions in the system.

The Board rejected NTP’s argument that Telenor

“does not enable one with ordinary skill in the art to build

a system for transmission of originated information from

an RF information transmission network to an RF re-

ceiver.” NTP argued that Telenor fails to disclose the

means of communication between the base station and

the mobile station. NTP contended that the absence of

this disclosure is evidence that the Telenor developers

had not resolved how to perform this communication at

the time the document was prepared. The Board held

that NTP only pointed to the absence of specifics and put

forth no evidence that it would require undue experimen-

tation to “fill in” this missing disclosure. 2010-1263 J.A.

59.

NTP makes the same argument on appeal focusing on

the link between the base station and the mobile station

in the Telenor figure above. NTP concedes that Telenor

discloses protocols for this communication. 2010-1263

Appellant’s Br. 53. But it argues that Telenor fails to

disclose how one would use these protocols. Telenor

states that this transmission “will depend on the func-

tionality of the protocol chosen for [communication].”

NTP further complains that the Board failed to credit its

expert’s testimony that “at the time this document was

written, the Telenor authors had not resolved how to

transfer radiograms between a base station and the

mobile stations.” 2010-1263 J.A. 3978-79. NTP argues

that this is “the only evidence of record regarding en-

ablement.” 2010-1263 Appellant’s Br. 53.

A patent claim “cannot be anticipated by a prior art

reference if the allegedly anticipatory [disclosure] cited as

prior art [is] not enabled.” Rasmusson v. Smithkline

35 IN RE NTP

Beecham Corp., 413 F.3d 1318, 1325 (Fed. Cir. 2005)

(quoting Elan Pharm, Inc. v. Mayo Found. for Med. Educ.

& Research, 346 F.3d 1051, 1054 (Fed. Cir. 2003)). Al-

though anticipation is a question of fact, Baxter, 952 F.2d

at 390, whether a prior art reference is enabling is a

question of law with underlying factual inquiries. In re

Gleave, 560 F.3d 1331, 1335 (Fed. Cir. 2009).

We agree with the PTO that Telenor is a sufficiently

enabling disclosure as a matter of law. Simply because

Telenor did not include every possible implementation

does not mean one of ordinary skill in the art would not

recognize the description as enabled. It is sufficient that

Telenor disclosed a protocol that one of ordinary skill in

the art would be able to use to implement the disclosed

system. The link between the base station and the mobile

station is not the focus of the reference, and the protocols

function as a guide to teach one of ordinary skill in the art

to accomplish this communication without undue experi-

mentation. NTP is incorrect that its expert testimony is

the only evidence on the record regarding enablement.

The Telenor reference itself provides the necessary evi-

dence to satisfy this requirement. Thus, the Board did

not err in its enablement determination.

Regarding several dependent claims in the various

patents, NTP argues that Telenor fails to teach that the

required interface “assembles the originated information

with other originated information received from a plural-

ity of the originating processors . . . into a packet.” 2010-

1263 Appellant’s Br. 55. In other words, this claim limi-

tation requires the interface to bundle multiple communi-

cations into a single packet. The Board notes that

Telenor discloses some grouping of messages for trans-

mission. Specifically, it points out that “one single MDX

may send several deliver [sic] messages to a NA.” 2010-

1263 J.A. 63. But this does not directly address the claim

IN RE NTP 36

language that requires assembling originated information

from a plurality of originating processors into a single

packet. While the PTO argues that Telenor teaches

something equivalent to the use of packets, 4 the reference

does not disclose that a single packet may contain origi-

nated information from a plurality of originating proces-

sors. Thus, the Board’s finding that Telenor teaches this

claim limitation is not supported by substantial evidence.

Keeping in mind that these are anticipation, not obvious-

ness rejections, the failure to disclose this claim element

requires reversal of these rejections. It is axiomatic that

for anticipation, each and every claim limitation must be

explicitly or inherently disclosed in the prior art. King

Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed.

Cir. 2010); Silicon Graphics, Inc. v. ATI Techs., Inc., 607

F.3d 784, 797 (Fed. Cir. 2010); Verizon Servs. Corp. v. Cox

Fibernet Virginia, Inc., 602 F.3d 1325, 1336-37 (Fed. Cir.

2010); Iovate Health Sci., Inc. v. Bio-engineered Supple-

ments & Nutrition, Inc., 586 F.3d 1376, 1380 (Fed. Cir.

2009).

Next, NTP argues that Telenor’s interface does not

“[remove] from the originated information information

added by the electronic mail system . . .” as required by

certain dependent claims. See ’670 patent claim 19. This

claim limitation requires that the interface remove some

information (such as an address) in order to replace it

with other information (such as an address of a different

format). The Board relies on the message forwarding

function of Telenor. We agree with NTP that, while

4 Because it is unnecessary to the resolution of this

issue, we will not decide whether substantial evidence

supports the finding that Telenor discloses the use of

packets generally, only whether it discloses the inclusion

of originated information from a plurality of originating

processors into a single packet.

37 IN RE NTP

message forwarding may require appending a new ad-

dress to the originated information, it does not inherently

require that any previously added information be re-

moved as the claims require. Telenor is silent about the

removal of information; thus, substantial evidence does

not support the Board’s fact-finding and we reverse the

anticipation rejection of all affected claims.

Finally, NTP argues that Telenor fails to disclose that

the destination processor includes a “program . . . [that]

makes the other originated information accessible to

application programs stored within the at least one desti-

nation processor.” See ’611 patent claim 77. We agree

with the PTO that the destination processor of Telenor

(labeled MS), necessarily includes a program that can

make originated information available to other programs

on the same destination processor. Thus, substantial

evidence supports the Board’s finding.

D. Perkins in View of Hortensius and Additional

References

The Board affirmed the rejections of several claims

under 35 U.S.C. § 103 over U.S. patent no. 5,159,592

(Perkins) in view of U.S. patent no. 5,917,629 (Horten-

sius) and other references. Perkins teaches a system for

communication between mobile users shown in figure 2:

IN RE NTP 38

The system allows bidirectional communications between

mobile units (MU) 10. Perkins col.3 ll.16-21. One of the

possible types of communications is “mail.” Id. col.7 ll.37-

39. Because the MUs are not permanent, the global

gateway 18 assigns each mobile unit a “pseudo-IP” ad-

dress. Id. col.5 ll.2-6. A user at an originating processor

may send a message destined for an MU. The message is

routed through the global gateway, which inserts the

pseudo-IP address of the destination MU. Each pseudo-IP

address includes digits to identify the LAN of the MU. Id.

col.4 ll.39-48. The global gateway then forwards the

message to the appropriate LAN’s local gateway for

delivery to the appropriate MU. Id. col.5 ll.28-30.

NTP argues that the Board erred in rejecting certain

dependent claims that require that a receiving RF device

have “at least one application program, executed by the

processor, which processes the information [contained in

39 IN RE NTP

an electronic mail].” ’451 patent claim 248. If NTP is

correct, then the rejection of these claims is improper

regardless of whether Perkins discloses electronic mail.

We agree with the PTO that Perkins teaches a processor

that necessarily processes the information received by the

RF receiver. The RF receiver receives the information

and makes it available to the destination computer. This

alone is some amount of “processing.” NTP would have us

adopt Dr. Rhyne’s definition of “application program” that

requires “substantial useful functions” for a user. 2010-

1254 Appellant’s Br. 40. We decline to adopt this rigid

definition and agree with the PTO that substantial evi-

dence supports a finding that Perkins discloses this

limitation.

Further, substantial evidence supports the Board’s

finding that Perkins teaches the addition of RF identifica-

tion information by an interface. Perkins teaches the

assignment of a pseudo-IP address to mobile units (which

correspond to the RF receivers). Perkins col.4 ll.49-60.

This address is added by an interface (the global gate-

way).

Regarding Hortensius, NTP argues that it fails to

teach the very limitation for which the Board relied on it:

transmission via a wireline network rather than the RF

information transmission network. But it is clear that

Hortensius does indeed teach this limitation. Hortensius

teaches a system for transmitting information between

nodes that may be “data processors, network servers

and/or any of a number of conventional devices.” Horten-

sius col.3 ll.5-7. Importantly, Hortensius states that “the

packet 40 may be directed from wired node 14 to another

wired node 14 or, via the protocol processor 28 and

transmitter 24, to one of the wireless nodes 18.” Id. col.4

ll.13-16. NTP makes much of the fact that Hortensius

discloses a broadcast mode when all of the wired and

IN RE NTP 40

wireless nodes receive a transmission. See id. col.4 ll.21-

29. But this disclosure of a broadcast mode does not

conflict with or alter the earlier statement that an indi-

vidual packet may be directed either between two wired

nodes or between a wired and a wireless node as the claim

requires. Thus, substantial evidence supports the Board’s

finding.

NTP also challenges the Board’s holding that certain

claims are obvious over Perkins in view of Hortensius and

the AAPA. Specifically, NTP argues that none of these

references teach “the one interface switch . . . assembles

the originated information with additional originated

information . . . into a packet . . . .” ’960 patent claim 3.

We agree with the PTO that substantial evidence sup-

ports the Board’s finding. Specifically, the AAPA states

that “X.24 protocol permit[s] a variable number of pages

or data transmissions each with its own network destina-

tion to be formed into a packet which is transmitted to a

single switch.” Id. col.7 ll.29-32. We also agree with the

Board’s conclusion that it would have been obvious to

combine these multiple communications into a single

packet.

Finally, NTP argues that the Board erred in holding

that certain claims would have been obvious over Perkins

in view of Hortensius, the AAPA and further in view of

“Notable Computer Networks,” Communications of the

ACM, October 1986, Vol. 29, No. 10 (Quarterman). 2010-

1274 J.A. 9049. NTP argues that these references fail to

teach that:

the wireline . . . is one of either a public or private

switch telephone network with the at least one

destination processor being addressed during

transmission of the other originated information

to the at least one destination processor when us-

41 IN RE NTP

ing the public or private switch telephone network

with a different address than the address used

during transmission of the originated information

to the at least one of the plurality of destination

processors by the RF information transmission

network.

’960 patent claim 7. In other words, when transmitting

over wireline, the wireline must be a phone line and the

destination processor must have a different address than

it would when the message is sent wirelessly. NTP’s

arguments are factual in nature: that no reference

teaches this claimed feature. However, Quarterman

states that “[a] resource may have more than one name,

address, or route” depending on the type of network.

2010-1274 J.A. 9055-56. We agree with the PTO that this

is substantial evidence to support the Board’s fact-finding

that Quarterman discloses this claim limitation.

V. NTP’s Concessions

NTP made a number of concessions that it may not

reargue on remand. These concessions are detailed in

NTP’s reply brief in the 2010-1274 appeal on pages 25

through 29.

One of the key concessions revolves around the refer-

ences’ disclosures of the use of TCP/IP. Many of the

claims at issue include limitations like “an address of the

one interface switch added to the originated information

at the one of the plurality of originating processors or by

the electronic mail system.” ’960 patent, claim 1. In its

opening brief (and before the Board), NTP argued that

several references failed to teach this limitation. In its

reply brief, NTP conceded that this limitation is taught by

Perkins, Verjinski, Cole, and Harrison. 2010-1274 Reply

Br. 25-29. Specifically, NTP conceded that, in a TCP/IP

system, data that are routed through any node necessar-

IN RE NTP 42

ily has the address of that node added to it somewhere in

the electronic mail system. Id. at 28.

NTP also conceded that, in Perkins, “the address as-

sociated with the processor in the mobile unit is transmit-

ted with the originated information.” 2010-1274 Reply

Br. 25. Regarding Verjinski, NTP conceded that “the IP

address of the portable host does uniquely identify the

processor in the portable host and the RF receiver

(phone).” Id. at 26. Finally, regarding Telenor, NTP

conceded that “the address of the User Agent is the same

as the identification of the User Agent’s wireless device.”

Id. at 29.

This was the opportunity for NTP to appeal these is-

sues. Given that it raised these issues, but then conceded

them, NTP is bound by these concessions and may not

reargue these points.

CONCLUSION

The Board’s construction of the term “electronic mail

[message]” was unreasonably broad. Because this con-

struction is relevant to many of the bases for rejection, we

remand for further proceedings in accordance with this

opinion. However, we agree with the Board that NTP

failed to “swear behind” certain references and that

Telenor is a “printed publication” under § 102(b). There-

fore, the Board need not reconsider those issues or any

other issue expressly addressed in this opinion.

VACATED-IN-PART, REVERSED-IN-PART, AND

REMANDED

COSTS

No costs.