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.