## Facts

- NTP owned U.S. Patent No. 6,317,592, directed to an email system transmitting messages from an originating processor to a destination processor via an RF data network, with intermediate components such as gateway and interface switches.
- The ’592 patent application was filed Dec. 6, 1999 and claimed an earlier effective date through a continuation chain to a parent application filed Sept. 28, 1998, ultimately asserting a May 20, 1991 priority date.
- In reexamination, the examiner rejected all 764 claims as unpatentable, including as anticipated by U.S. Patent No. 6,219,694 (Lazaridis), filed May 29, 1998.
- The Board affirmed, concluding (1) Lazaridis was prior art because the ’592 patent was not entitled to the parent application’s filing date under 35 U.S.C. § 120, and (2) Lazaridis anticipated all claims.
- A key dispute was the meaning of “destination processor”: NTP argued it could include gateway and interface switches; the Board construed it as an end-node device providing immediate and direct physical access to email, distinct from intermediate switches.
- On appeal, NTP challenged the Board’s construction of “destination processor,” the PTO’s authority to decide priority in reexamination, and the Board’s priority determination on the record.

## Issues

1. Whether the Board correctly construed “destination processor” under the broadest reasonable interpretation standard as an end-node device providing immediate and direct physical access to email.
2. Whether the PTO may determine entitlement to an earlier effective filing date under 35 U.S.C. § 120 during reexamination.
3. Whether, applying the proper claim construction and written description requirements, the ’592 patent was not entitled to the asserted earlier priority date, making Lazaridis prior art that anticipated all claims.

## Decision

- The Federal Circuit affirmed the Board.
- The court upheld the Board’s construction of “destination processor” as an end-node device with immediate and direct physical access to email, excluding gateway and interface switches.
- The court held the PTO may consider and decide § 120 priority entitlement in reexamination because it bears on whether a reference qualifies as prior art.
- The court agreed that, under the upheld construction, the parent application did not provide adequate written description support for the later-claimed “destination processor” scope; therefore the ’592 patent could not claim the earlier effective filing date.
- Because the priority claim failed, Lazaridis qualified as prior art, and the undisputed anticipation finding supported rejection of all 764 claims.

## Legal Principles

- In PTO reexamination, claims are construed under the broadest reasonable interpretation, informed by the specification’s usage and distinctions among system components.
- The PTO may adjudicate entitlement to an earlier effective filing date under 35 U.S.C. § 120 in reexamination when necessary to determine whether a reference is prior art.
- To obtain § 120 benefit, the earlier application must satisfy written description support for the later-claimed subject matter; a continuation chain alone does not secure priority if the earlier disclosure does not support the later claim scope.
- If a patent is not entitled to an earlier effective filing date, intervening references may qualify as prior art and can support anticipation rejections.

## Conclusion

The Federal Circuit sustained rejection of all claims after affirming a narrow construction of “destination processor” and confirming that priority entitlement under § 120 is a proper and necessary inquiry in reexamination when it determines whether an asserted reference is prior art.


In re NTP, Inc., 654 F.3d 1268 (Fed. Cir. 2011)