During reexamination, the BPAI’s “broadest reasonable claim construction” was overly broad because it encompassed prior art specifically excluded by the inventors. The Board’s rejection of the argument that prior art was not authentic was upheld because it was established that the library received the reference before the critical date, and there was no specific evidence suggesting that the reference was significantly modified after the critical date.

During litigation, alleged infringer Research In Motion (“RIM”) filed reexamination requests as to certain patents being asserted against RIM’s BlackBerry products.  The patents are directed toward a system for sending information from an originating processor to a destination processor using a Radio Frequency (“RF”) receiver as an intermediary.  The USPTO Board of Patent Appeals and Interferences (“Board”) affirmed the rejection of claims in all reexamined patents as obvious and anticipated.  The applicant appealed.

Among several issues considered on appeal, the Federal Circuit rejected the Board’s construction of “electronic mail message” as being over broad to the extent that the Board’s construction did not require the capability for entry of message content, an identification of an originating processor, and a subject.  The court held that the over broad construction relied upon by the Board encompassed prior art that the inventors specifically sought to exclude by using the term “electronic mail” (e.g. pager messages).  The court also rejected the Board’s construction of “electronic mail system” for over breadth on the basis that it required only one processor, rather than a plurality as indicated by the patent language.  

The Federal Circuit rejected the applicant’s argument that a prior art reference underpinning many of the rejections affirmed by the Board was not a “printed publication” under 35 U.S.C. § 102(b).  The court held that the Board’s findings that the reference was authentic and reasonably accessible were supported by substantial evidence.  The authenticity finding was based in part on evidence of general library practice establishing a date of receipt earlier than the critical date, and in part because aside from vague allegations that the document may have been tampered with, the applicant provided no specific evidence to suggest that any relevant pages might have been altered after the critical date.

A copy of the opinion can be found here.