Last NTP Patent Tentatively Thrown Out

pcause writes "Reuters reports that the fifth NTP patent has been rejected. What does it say about the US Patent office and software patents that these patents have made it through trials, appeals, etc and only now has the Patent Office decided they weren't any good in the first place?" From the article: "The U.S. Patent and Trademark Office has sided with BlackBerry portable e-mail device maker Research in Motion Ltd. by issuing a non-final rejection of a fifth patent at the center of its legal battle with patent holding company NTP Inc. The decision means the patent agency has now issued non-final rejections of all five patents at issue in a BlackBerry patent-infringement case before a federal judge."

RIM needs to be hit on the head anyway

[roman_mir]

They started this patent war, they were the ones who were suing a bunch of smaller firms doing the same thing as RIM, that's why the late Thomas Campana even started his lawsuit on the first place - he saw a newspaper article about RIM suing other firms for patent infringements, the same sort of patents NTP was sitting on.

Prior Art

[hipster_doofus]

There was an article - I believe in the Wall Street Journal - about these patents being rejected within the last week. The USPTO only does a very minimal prior art search during the initial application process because there is just too much data to dig through in order to complete an exhaustive search for prior art. Once the patent is issued, if a patent disput arises, then normally the two sides of the dispute will provide additional information to the USPTO that supports their side of the argument. In this instance, RIM was able to find prior art in Europe that pre-dated NTP's patent applications by a year, or so. This prior art was the basis for the non-final rejections that have been recently returned by the USPTO.

Re:Easy to side with RIM

[sbowles]

This OBJ Article [ottawabusi...ournal.com] doesn't discuss the particular patent that was thrown out, but it does indicate that new evidence of prior art presented by RIM was instumental in the decision.

The above article also indicates that other patents held by InPro where overturned by German and UK officials in the last week.

Re:Easy to side with RIM

[3TimeLoser]

Correct me if I'm wrong, but didn't the Blackberries of old (circa 2000/2001) use the pager network instead of cellular? If so, then I doubt the current Blackberries will fare much better than cell phones in the next disaster. Kind of makes that "Blackberries kept working after 9/11" argument a little weak.

Re:Easy to side with RIM

[weisen]

Do you have actual knowledge that these patents "survive[d] so much previous scrutiny" or is this the first actual challenge at the patent office?

The previous challenge was in court which, as far as I know, came to the conclusion that RIM infringed the patents, not that the patents were valid. What seems to be happening is a race between the patent review process and the legal process.

The USPTO has a history of issuing patents for which there exists prior art both to "little guys" and "big guys." The resulting process of then having those patents invalidated can take years. All throughout the 1980's, the Patent Office refused to hire people with Computer Science backgrounds. I assume that they eventually relented, but this was after years and years of software patent review by people with Electrical Engineering backgrounds and virtually no software experience.

Re:Under pressure...

[coolgeek]

Nice hat you have there? Is that tin foil?

Really, calling a non-final decision on these patents "politically motivated" is a stretch. If your conspiracy theory held any water, the USPTO would have issued final decisions, thereby removing any possibility that the patents may be upheld when NTP appeals the non-final decision. Yes, I know that hat of yours is telling you that the USPTO will control the review process and it will be a sham, however that theory overlooks the fact that NTP will be able to file suit against the USPTO as the first sign of any shenanigans, and then have the benefit of judicial intervention.

Overall this is a very good thing. It lays down the gauntlet that these shill IP firms like NTP may have to seriously cough up some cash to try to exert their extortion. I really don't see what could be patentable for wireless email. We've have packet radio for decades already.

Re:Easy to side with RIM

[CaymanIslandCarpedie]

The patents here have already been scrutinized by a district court and upheld as valid and infringed.

Correct me if I'm wrong, but the district court specifically DOES NOT have any say on whether or not a patent is valid (they can only rely on the patents current status with the USPO. So the the USPO has granted a valid patent, the court doesn't do any scrutinizing on whether its valid or not, it just decides if it was infringed upon. The courts must rule based on the assumption the patent is valid cause it just ain't thier job to decide either way.

None of the patents were "thrown out"

[werdna]

As easy as it is for me to want to side with RIM, and be excited that this last patent was thrown out...

That isn't the case. The USPTO, on its own motion, placed these patents through a process called reexamination, in which each patent claim allowed is subject to review for subtantial new questions of patentability not previously considered by the office. So an examiner takes a new bite at the apple, based on new prior art, and reexamines te claims in view of the new art.

All that happened here, is that what is called an "iniitial official action" was issued, laying out the examiner's case that there existed new prior art that could invalidate the patent. First action rejection of all claims, which didn't happen in this case, is ROUTINE in ALMOST EVERY patent examination, and rarely indicates that the patent claims are in doubt. The next step is that the applicant files a response, either defending the claims as originally allowed, or introducing amendments or amended claims and defending them. It is then ROUTINE in MOST applications, that some or all patent claims are allowed to issue, either as originally filed or with some amendments.

So, if a single claim of a single patent survives unscathed, or allowed and amended claims are narrower but still infringed, nothing gets better for RIM.

The fact of initial rejections indicate nothing -- it is just another point of leverage for a settlement negotiation.

This is not the first time this has been pointed out in these letters.

Re:Easy to side with RIM

[HidingMyName]

The parent's link was broken, NTP's Wikipedia Entry [wikipedia.org] has links to several patents. Interestingly, many of the ones I looked at were filed in the 1997-1999 time frame. Wikipedia's entry indicates the patents that are rejected, but does not give the reasons why.

Re:Uh, huh

[ab762]

It's the claims, not the general description, that are the enforceable part of the patent. (There are 276 of them.)

But, in the tail end is this little note:

An Appendix containing a listing of control programs for controlling the transmission of information between an RF receiver and a destination processor and controlling the operation of an interface switch in accordance with the invention is attached. The programs are written in the C programming language. The program for controlling the transmission of information from the RF receiver to the destination processor appears at pages 1-9 and the program for controlling the operation of the interface switch appears at pages 10-12. The Appendix contains subject matter which is copyrighted. A limited license is granted to anyone who requires a copy of the program disclosed therein for purposes of understanding or analyzing the invention, but no license is granted to make a copy for any other purposes including the loading of a processing device with code in any form or language.

So some work was really done to justify this patent as an invention.