CAFC: Improper Revival of Abandoned Application Is No Defense For Infringement

Aritocrat Technologies Australia PTY Lmtd. v. International Game Tech., September 22, 2008 (08-1016)

Aristocrat accused IGT of patent infringment, where the patents-in-suit were revived in the USPTO after being abandoned for paying the national filing fee one day late. During litigation, IGT argued that the PTO improperly revived the applications under the "unintentional" standard, instead of the "unavoidable" standard. The district court agreed that the patents were "improperly revived" and invalidated the patents.

On appeal, the CAFC turned to 35 U.S.C. 282, which catalogs defenses for patent infringement: (1) noninfringement, (2) invalidity, and (3) "any other fact or act made a defense by this title." Under section 282(2), an invalidity defense may be based "on any ground . . . as a condition for patentability."

After review, the CAFC did not hold revival of an abandoned application a condition for patentability. In fact, only sections 101-103 apply:

It has long been understood that the Patent Act sets out the conditions for patentability in three sections: sections 101, 102, and 103 . . . While there are most certainly other factors that bear on the validity or the enforceability of a patent, utility and eligibility, novelty, and nonobviousness are the only so-called conditions for patentability.

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The salient question . . . is whether improper revival is "made a defense" by title 35. We think that it is not. Congress made it clear in various provisions of the statute when it intended to create a defense of invalidity or noninfringement, but indicated no such intention in the statutes pertaining to revival of abandoned applications . . . Rather, these provisions merely spell out under what circumstances a patent application is deemed abandoned during prosecution and under what circumstances it may be revived. Because the proper revival of an abandoned application is neither a fact or act made a defense by title 35 nor a ground specified in part II of title 35 as a condition for patentability, we hold that improper revival may not be asserted as a
defense in an action involving the validity or infringement of a patent.

REVERSED AND REMANDED

Breathing room for prosecutors - quoting from Magnivision, Inc. v. Bonneau Co., 115 F.3d 956 (Fed. Cir. 1997), the CAFC stated:

"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 . . . Imperfection in patent examination, whether by the examiner or the applicant, does not create a new defense called ‘prosecution irregularities’

Thus, absent some inequitable conduct, prosecution irregularities should not be the focus in subsequent litigation:

There is good reason not to permit procedural irregularities during prosecution, such as the one at issue here, to provide a basis for invalidity. 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.