Improper revival cannot be raised as grounds for invalidity in an infringement actionSeptember 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,

← Return to Filewrapper

Stay in Touch

Receive the latest news and updates from us and our attorneys.

Sign Up