Filewrapper-old

Improper revival cannot be raised as grounds for invalidity in an infringement action
September 23, 2008
In a decision yesterday, the Federal Circuit reversed a district court's summary judgment of invalidity. The district court held that the application that led to the patent-in-suit was abandoned, and the USPTO improperly revived it, rendering the patent invalid. The applicant missed the 30-month PCT national phase deadline by one day, but successfully petitioned to have the application revived for unintentional abandonment. The district court held the USPTO should have applied the unavoidable abandonment standard, and held the patent was "improperly revived," and therefore invalid. The court also held a related patent invalid on the basis that the first was prior art to the second, anticipating the second patent's claims.The Federal Circuit reversed. The court held "improper revival" is not a cognizable defense to an infringement action under § 282, because it is not a "condition for patentability," nor is it "made a defense" by another section of Title 35. Therefore the patent should not have been held invalid on that basis, and, by extension, the second patent should not have been held to be invalidated by the first.The Federal Circuit summed up the issue by quoting its decision in Magnivision, Inc. v. Bonneau Co.:
Procedural lapses during examination, should they occur, do not provide grounds of invalidity. Absent proof of inequitable conduct, the examiner's or the applicant's absolute compliance with the internal rules of patent examination becomes irrelevant after the patent has issued.
More detail of Aristocrat Techs. Austl. PTY Ltd. v. Int'l Game Tech. after the jump.Aristocrat owns two patents that resulted from a PCT application, claiming priority to two Australian provisional applications. The timeline of the relevant prosecution history is as follows:
  • July 8, 1997: Australian provisional applications filed
  • July 8, 1998: PCT application filed
  • January 10, 2000: 30-month deadline for entry to national phase
  • January 11, 2000: Fee received by USPTO for entry into national phase
The USPTO mailed a notice of abandonment based on the late receipt of the fee. Aristocrat responded by filing a Petition to Correct the Date, which the USPTO denied without prejudice because Aristocrat failed to provide sufficient evidence to corroborate the date the filing fee was mailed. Aristocrat then filed a petition to revive the application under 37 C.F.R. § 1.137(b), claiming that the delay in paying the national stage filing fee was "unintentional." The USPTO granted the petition, and the application eventually matured into one of the two patents-in-suit. A continuation was also filed, and that led to the second patent-in-suit. Aristocrat filed suit against IGT for infringement of the patents. IGT answered and moved for summary judgment of invalidity on the basis that the first patent was was invalid because after it was abandoned, Aristocrat was required to show that its delay was "unavoidable" in order to revive the application, not merely that its delay was "unintentional." The district court agreed, and held the patent invalid as improperly revived. By so holding, the district court held IGT was permitted, pursuant to 35 U.S.C. § 282, to raise the alleged improper revival as a defense to infringement. The district court also deemed the second patent invalid on the basis that if the first patent application was not properly revived, it constituted invalidating prior art under 35 U.S.C. § 102(b). Aristocrat appealed.The Federal Circuit reversed. The court examined whether "improper revival" may be raised as an invalidity defense in an action involving the infringement or validity of a patent. § 282 lists the defenses available in an infringement action:
  1. Noninfringement, absence of liability for infringement or unenforceability,
  2. Invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability,
  3. Invalidity of the patent or any claim in suit for failure to comply with any requirement of sections 112 or 251 of this title,
  4. Any other fact or act made a defense by this title.
IGT only asserted that subsections (2) and (4) supported its defense here. § 282(2) permits an invalidity defense based "on any ground specified in part II of this title as a condition for patentability." The court held two prerequisites must be met for a defense to qualify under this subsection: it must fall within part II of title 35 and it must be a "condition for patentability." The Federal Circuit noted it has long been understood that the Patent Act sets out the conditions for patentability in three sections: sections 101, 102, and 103. These conditions are included in Chapter 10 of the Patent Act, entitled "Patentability of Inventions," and the titles of the sections themselves make clear that they relate to fundamental preconditions for obtaining a patent. The court distinguished these sections from § 112, provides certain additional requirements for a patent to be valid, one of which, for instance, is that the patented invention be enabled by the specification. 35 U.S.C. § 112. The requirements of § 112 are not "conditions for patentability"; they are merely requirements for obtaining a valid patent. The court noted § 282 itself draws a distinction between invalidity based "on any ground specified in part II of this title as a condition for patentability" and § 112, as a defense based on § 112 is covered explicitly by § 282(3). If § 112 was a "condition for patentability," then § 282(3), relating to invalidity under § 112, would be redundant. Accordingly, the court held § 133, the basis for the assertion that the "unavoidable" standard should apply to the national stage deadline, and § 371, dealing with the deadline for entering national phase, were not "condition[s] for patentability," and were therefore not available as a defense under § 282(2).Turning to § 282(4), the Federal Circuit likewise concluded this did not make improper revival a defense in an infringement action. This provision permits "any other fact or act made a defense by this title" to be used as a defense to an infringement claim. The court noted if this meant "any provision in title 35 would provide a defense under section 282(4)," there would "be no reason for the inclusion of sections 282(1) through (3)." The court noted that several other provisions do, by their terms, provide a defense, such as §§ 185, 272, and 273. The absence of any such language in §§ 131 and 371 indicates these sections are not available as a defense under § 282(4). The court thus held that improper revival may not be asserted as a defense in an action involving the validity or infringement of a patent. In summarizing the court's view on such assertions, the court noted:Once a patent has issued, the procedural minutiae of prosecution have little relevance to the metes and bounds of the patentee's right to exclude. If any prosecution irregularity or procedural lapse, however minor, became grist for a later assertion of invalidity, accused infringers would inundate the courts with arguments relating to every minor transgression they could comb from the file wrapper. This deluge would only detract focus from the important legal issues to be resolved—primarily, infringement and invalidity.In the event there is an affirmative misrepresentation, inequitable conduct remains available to remedy such an issue. However, for general prosecution irregularities, the message to infringement defendants is clear: don't bother bringing it up. To read the full decision in Aristocrat Techs. Austl. PTY Ltd. v. Int'l Game Tech., click here.
Post has no comments.
Post a Comment




Captcha Image
Return to the Filewrapper Blog
  Newer Posts Older Posts  

Purpose

The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

Disclaimer

McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole

Connect with MVS

Enter your name and email address to receive the latest news and updates from us and our attorneys.

Subscribe to: MVS Newsletter

Subscribe to: Filewrapper® Blog Updates

  I have read and agree to the terms and conditions of McKee, Voorhees & Sease, P.L.C.