Research In Motion confirmed that it received a copy today of a ruling issued by the U.S. Patent and Trademark Office in the Director-initiated inter partes reexamination of NTP, Inc. Patent #6,317,592 (‘592 Patent”). This ruling, described by the Patent Office as an Action Closing Prosecution, is comparable to a Final Office Action in ex parte reexamination proceedings at the Patent Office. This ruling from the Patent Office maintains the outright and complete rejection of all claims in the ‘592 Patent, which includes five of the seven claims that RIM was ruled to have infringed by the Court of Appeals for the Federal Circuit in August, 2005. In addition the ruling confirmed that no grounds for patentability of the ‘592 Patent were found by the Patent Office in the course of its reexamination.
As a result of this ruling, NTP’s prosecution of claims in the reexamination of the ‘592 Patent is now closed and under these circumstances NTP may not submit new subject matter to the Patent Office for consideration. Similar to Final Office Actions in ex parte reexaminations, NTP may provide commentary to the Patent Office, but the Patent Office is expected to issue a Right of Appeal Notice following a 30-day response period at which point NTP will have the right to appeal to the Patent Appeal Board.
In all of the Patent Office rulings to date relating to the reexamination of all eight of the NTP patents, NTP’s arguments on the merits of patentability have been rejected by the Patent Office.
It is anticipated that the Patent Office will continue its reexamination of NTP’s remaining patents with special dispatch leading to Final Office Actions. All of the remaining NTP patent claims have now been rejected by the Patent Office in initial and second Office Actions, based in part on prior art not considered in the 2002 trial in the United States District Court for the Eastern District of Virginia.