Hindsight — In re NTP

The decision in In re NTP, Inc., 2010-1243  (Fed. Cir. April 1,2011) has a good observation about hindsight analysis when a cited combination of  references results in a superfluous component.  While the facts of the opinion dealt with superfluous RF networks, one could see it being persuasive in regard to combinations of references that result in superfluous computer networks, transmitters, etc.  Judge Moore wrote for the panel (Gajarsa, Moore, and Clevenger):

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 hindsight 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 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 information transmission network would have been obvious. This type of piecemeal analysis is precisely the kind of hindsight 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.

In addition to the above comment by the panel that the PTO’s reasoning was based on hindsight, there was also a chorus of “hindsight” by the judges during the oral argument when the topic came up for discussion: [Listen].

You can read the entire opinion here: [Read].

You can listen to the oral argument here: [here].  The oral argument is extremely long (over three hours).  It was very well argued by both sides.

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