Patent reexaminations
During the litigation, RIM found previously unconsidered prior art that "raised a substantial new question of patentability" of the NTP patents. RIM filed 12 "requests for a reexamination" in the US Patent and Trademark Office (USPTO) from December 2002 to May 2005. A team of senior patent examiners at the USPTO was assigned to the cases and the cases were granted "special" status. Special status means that the proceedings are accelerated.
NTP became suspicious of contacts between RIM and the PTO, prompting the company to file FOIA requests which revealed attempts by RIM attorney David Stewart to obtain off-the-record interviews with PTO examiners, though such interviews are prohibited by federal regulations (e.g., 37 CFR 1.560(a), stating that "requests that reexamination requesters participate in interviews with examiners will not be granted" and 37 CFR 1.955 stating that "interviews prohibited in inter partes reexamination proceedings").
RIM and NTP filed thousands of pages of documentation and expert opinions to support their respective positions. Some of the cases have been examined and some of the patents were rejected. In two of the cases, the rejections were made final.
NTP has appealed the final rejections to the USPTO's Board of Patent Appeals and Interferences (BPAI). A key issue is whether certain documents found in a Norwegian library should be considered "publications" and would therefore anticipate the claims of the patents. These documents are known as the "Telenor documents".
The BPAI has not rendered its decision on any of the appeals. Thus the patents are still presumed valid by the US courts. If BPAI affirms the rejections, NTP can appeal to the US Court of Appeals for the Federal Circuit (CAFC). If CAFC too affirms the rejections, NTP can petition the US Supreme Court for a writ of certiorari.
Members of the public can follow the process of the reexaminations at the USPTO's internet portal.