The United States Court of Appeals for the Federal Circuit reversed summary judgment of invalidity where it was alleged that the United States Patent and Trademark Office ("PTO") had improperly revived an abandoned patent application. The decision in Aristocrat Technologies v. International Game Technology, Docket No. 2008-1016 (Fed. Cir. Sep. 22, 2008), found the PTO's revival of the application, even if improper, to be at most a procedural lapse not giving rise to an invalidity defense cognizable under 35 U.S.C. §282. The Federal Circuit expressly declining to reach the question of whether the Patent Act prohibited revival of an abandoned patent application except upon a showing of "unavoidable delay."
I. Case Description
Aristocrat, the assignee of U.S. Patent No. 7,056,215 ("the ‘215 patent"), sued International Game Technology ("IGT") for infringement of the '215 patent in the U.S. District Court for the Northern District of California. The ‘215 patent, issued in 2006, arose from a U.S. national stage filing under 35 U.S.C. §371 of a previously-filed PCT application that in turn claimed priority to an Australian provisional patent application filed on July 8, 1997. Aristocrat's fee to pay for the U.S. national stage filing was received one day late, and the PTO mailed a notice of abandonment to Aristocrat. The U.S. national stage application was eventually revived following Aristocrat's petition for revival claiming that the delay was "unintentional." Subsequent prosecution of the U.S. national stage application resulted in issuance of the ‘215 patent. Aristocrat sued IGT for infringement of the ‘215 patent.
The District Court granted IGT's motion for summary judgment of invalidity on the basis that the Patent Act permitted revival of an abandoned patent application only upon a showing of "unavoidable delay" (a showing Aristocrat never attempted to make). The District Court held that the PTO improperly revived Aristocrat's patent application and that such improper revival was a defense to infringement of the '215 patent. Aristocrat appealed.
The Federal Circuit found it unnecessary to reach the question of whether the Patent Act prohibited revival of an abandoned patent application except upon a showing of "unavoidable delay." Under the Federal Circuit's construction of 35 U.S.C. §282, proper revival is not a "condition for patentability" and improper revival is not a cognizable defense to infringement.
Section 282 lists four defenses available in an action involving validity or infringement of a patent, of which two (subsections (2) and (4)) were at issue:
- Subsection (2) provides a defense for "invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability." The Federal Circuit found that this defense is limited to allegations that the patent failed to meet the conditions for patentability provided in sections 101, 102 or 103 (patentable subject matter, utility, novelty and non-obviousness). In reaching this conclusion, the Federal Circuit noted that Section 282(3) provides separate defenses for "invalidity of the patent or any claim in suit for failure to comply with any requirement of sections 112 or 251 of this title." Accordingly, compliance with sections 112 and 251, for example, while required for a patent to be valid, is not a "condition for patentability" as the term is used in Section 282(2). Similarly, proper revival of an abandoned application is not a "condition for patentabilty." Instead, the Federal Circuit held, the phrase "condition for patentability" means that subsection Section 282(2) "relates only to defenses of invalidity for lack of utility and eligibility, novelty and nonobviousness, and does not encompass a defense based upon the alleged improper revival of a patent application."
- Subsection (4) provides a "catch-all" defense for "any other fact or act made a defense by this title." The Federal Circuit limited the scope of the "catch-all" to specific sections having express language signaling that Congress intended those sections to provide a defense to an accused infringer (for example, Section 273 "Defense to infringement based on earliest inventor"). A broader construction of subsection (4), the Federal Circuit noted, would make subsections (1) through (3) redundant. Because neither Section 133 or Section 371 indicates that these sections may provide a defense to an accused infringer, the Federal Circuit held they were not within the scope of Subsection (4)'s "catch-all."
In concluding that "improper revival may not be asserted as a defense in an action involving the validity or infringement of a patent," the Federal Circuit reaffirmed Magnivision, Inc. v. Bonneau Co., 115 F.3d 956 (Fed. Cir. 1997) "[p]rocedural lapses during examination, should they occur, do not provide grounds of invalidity." The Federal Circuit also explained a distinction between the present case and Quantum Corp. v. Rodime, PLC, 65 F.3d 1577 (Fed. Cir. 1995), which found that a patentee in violation of 35 U.S.C. §305 subjected itself to a defense of invalidity "because any other result would render the prohibition [against broadening claims] in section 305 meaningless." The Federal Circuit observed that, in Quantum, failure to impose invalidity for violation of the statute would encourage noncompliance, whereas it "could discern no legitimate incentive for a patent applicant to intentionally abandon its application, much less to attempt to persuade the PTO to improperly revive it."
Thus, the Federal Circuit reversed the District Court's grant of summary judgment and remanded the case to the District Court.
The Federal Circuit's decision leaves open whether the PTO's current practice of granting petitions to revive on the basis of "unintentional delay" is valid under the Patent Act. More importantly, the decision substantially narrows the defenses that may be raised in an infringement action by clarifying that noncompliance with sections of the Patent Act during prosecution gives rise to a Section 282 defense only when (a) the noncompliance relates to Sections 101, 102, 103, 112 or 251; (b) the noncompliance relates to sections providing express statutory language signaling that Congress intended those sections to provide a defense to an accused infringer (e.g., Sections 273, 185, 184 and 272); or (c) the noncompliance relates to sections where failure to impose invalidity for violation of the statute would encourage noncompliance (e.g., Section 305).