Federal Circuit clarifies rules regarding patent term adjustmentOctober 31, 2022

Last month, in Sawstop Holding LLC v. Vidal, the Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed two decisions by the District Court of the Eastern District of Virginia regarding patent term adjustment (“PTA”) for two patents owned by Sawstop Holding LLC (“Sawstop”). In both decisions the District Court granted summary judgement in favor of the United States Patent and Trademark Office (“USPTO”) in two lawsuits filed by Sawstop challenging denial of patent term adjustments (“PTAs”) for the two Sawstop patents.

The  patents-in-suit are U.S. Patents Nos. 9,522,476 (“the ‘476 patent”) and 9,927,796 (“the ‘796 patent”). Both are directed to “power saws with a safety feature that instantly stops the saw blade upon contact with flesh”. Issuance of both of the patents was delayed by appeal proceedings. Sawstop sought PTA for both patents based on 35 U.S.C. § 154(b)(1)(C) which provides for PTA in some cases relating to appellate review by the Patent Trial and Appeal Board (“PTAB”) or by a Federal court.

In order to resolve the case, the Federal Circuit considered and interpreted § 154(b)(1)(C)(iii), which provides for PTA if the issuance of a patent is delayed due to “appellate review by the Patent Trial and Appeal Board or by a Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability”. The two phrases of the § 154(b)(1)(C)(iii) at issue were: (1) “issued under a decision in the review”, and (2) “reversing an adverse determination of patentability”.

Both the ‘476 and ‘796 patents presented unique scenarios for possibly applying PTA. Upon appeal to the Federal Circuit, Sawstop offered several arguments relating to the interpretation of § 154. However, the Federal Circuit ultimately affirmed the decisions of the district courts in denying the PTA sought by Sawstop for both patents. In so doing, the Federal Circuit laid out two criteria for interpreting the two relevant phrases of the statute. These two criteria are: (1) the appeal must result in an adverse determination of patentability being reversed, and (2) the application reviewed in the appeal must issue as a patent as a result of that reversal.

Expanding on these two criteria, the Federal Circuit made it clear that in order to meet the first criterion, an adverse determination of patentability must be reversed such that the claim at issue is rendered patentable after the appeal. Further, in order to meet the second criterion, the Federal Circuit noted that at least one claim must issue under the mandate of the appellate decision. The Federal Circuit held that “at a minimum, this means that at least one claim that ‘issued’ must have been analyzed by the [PTAB] or District Court that [issued the appellate decision].” Thus, at least one issued claim must be identical to a claim held patentable during the appellate review.

Thus, the instant case provides some clarity as to the interpretation of 35 U.S.C. § 154(b)(1)(C)(iii), which governs PTA wherein the delay in patent issuance is due to appellate review by the PTAB or by a Federal court.

Joseph M. Hallman is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Joseph directly via email at joseph.hallman@ipmvs.com.

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