Aristocrat v. IGT (Fed Cir. 2008 – on rehearing) ITG PETITION
IGT has petitioned the Federal Circuit for a rehearing en banc. IGT asks the court to consider which violations of the Patent Act would be sufficient to render a patent invalid during litigation.
In this case, Aristocrat filed its US national-stage application one day late. The PTO allowed the applicant to revive the application as unintentionally abandoned. In litigation, IGT argued that the patent should be held invalid as improperly revived because the statute only allows for revival of unavoidably abandoned applications in this situation.
Without reaching the merits of IGTs validity argument, the Federal Circuit summarily dismissed IGT's claim – finding that 'improper revival' is not a 'cognizable defense' because it does not fit within any of the four defenses listed in 35 U.S.C. §282 and it is not otherwise justified in equity.
This unanimous decision – signed by Judges Newman, Bryson, and Linn – has broader implications. It calls into question whether traditional invalidity defenses such as nonstatutory double patenting and improper inventorship remain. IGT provides its own list of challenges that will be barred even after PTO error. Notably the gaming company argues that under the new rule, improper revivals of any type could not be challenged nor could failure to pay the maintenance fees.
In its brief, IGT seeks to overturn the panel's narrow interpretation of a "condition for patentability." Section 282(2) allows for an invalidity defense based on failure to meet a condition for patentability. However, the appellate panel limited that section only to issues of novelty, utility, and nonobviousness.
'Section 131 supports [a] common sense reading of the statute. It states that the PTO "shall issue a patent" only if "the applicant is entitled to a patent under the law." 35 U.S.C. § 131. The plain meaning of that provision is that lawful entitlement to a patent is a condition of patentability. An applicant who abandoned its application without reviving it under the statutory mandated standard is not lawfully entitled to a patent and should have no right to enforce it. The panel's decision overthrows these common-sense principles as set forth in the Patent Act.' IGT rehearing motion.
IGT also argues that improper revival was "made a defense" by Congress when it created the law of abandonment that allows only revival for unavoidable delay in cases like these. IGT argue essentially that failure to comply with any patent statute is sufficient to render the patent invalid in litigation.
- DDC Comment: The Case Should be Heard. The Patent Office serves as a threshold check to establish presumptive property rights. However, both the technology and the law are complicated enough to warrant a 'second look' to ensure that each legal requirement is met. It is clear that a significant number of issued patents would be found invalid if challenged. The second look could be through litigation challenges, reexamination proceedings, or some other ex post proceeding. This opinion, however, concludes that no challenge is available in a variety of potential cases. That result is wrong from a policy perspective and It appears that IGT has a strong statutory construction argument as well.
- Hat Tip: Thanks to Chico Gholz and Mark Lemley for suggesting specific implications of the panel holding.