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.
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‘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.
Notes:
- 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.
“Professional” as you have carefully clarify for us is still “personal” and is not the point, the Director in his official capacity has discretion to determine what constitutes unavoidable in a particular case despite how the applicant may characterize his own delay.
Unavoidable vs. unintentional is hardly “settled” law since the determination is left to the Director’s discretion.
I don’t think its so outrageous that “unintentional” can morph into “unavoidable” particularly given the Director’s statutory discretion and case law that finds that even ignorance can render unintentional delay unavoidable.
Some words of wisdom Hello? “Better to keep your mouth shut and be thought a fool than to open it and remove all doubt”
My point is that the director would have to be stu pid to believe the same thing you hold as your “opinion”. He’s not du mb enough, in his professional capacity (not his personal du mb as s) to not know that the statute sets forth the only circumstances in which revival is permitted and “unintentional” delay is not one in this case. Your “point” that the director can interpret “unavoidable” into being “unintentional” when there is already a settled difference between the two is outrageous.
If it is ultimately held that improper revival is not cognizable as an infringement defense, can the PTO correct an improper revival after the improperly revived application has issued? If so, can the PTO be petitioned to correct its own error and withdraw the revival? What if there was fraud or misrepresentation in the revival request that comes to the PTO’s attention after the patent issued?
Hello said: “First, the director certainly would not all of a sudden deem something that was termed even by the applicant to be unintentional to magically have also been unavoidable. Such talk is ludicrous. He may not be a patent expert, but he is a competent lawyer from what I hear and I think he understands the difference in the two standards”
Hahahaahahahahahahahahaahahah
Hello? who the heck are you? You just blew in when someone left the screen door open.
I think I can speak for my good friend Mr. Caveman when I say that you don’t know what you’re talking about.
Its extremely funny that you think I’m referring to “the Director” in his personal capacity… you are a worse m0r0n than Mooney. And, not surprisingly, you completely missed the point and probably always will.
“IGT appears to ignore that the statute gives the Director discretion to determine what constitutes “unavoidable” delay. Thus, if an applicant characterizes the delay as “unintentional” the Director may still properly find that the reasons are satisfactory to establish that the delay was unavoidable.”
Cave your posts just get worse and worse. First, the director certainly would not all of a sudden deem something that was termed even by the applicant to be unintentional to magically have also been unavoidable. Such talk is ludicrous. He may not be a patent expert, but he is a competent lawyer from what I hear and I think he understands the difference in the two standards. Further, even if he wanted to the law is clear that he cannot.
This case indeed needs review, I’m glad they went for it before it became set in stone and even harder to dethrone by some other person.
Dennis: “In a famous article titled “Rational Ignorance,” Mark Lemely gives a nice explanation of why we it would be a waste of money to ensure that initial patent examination is leakproof. The bottom line of the article is that most patents are not worth the time. ”
True enough. Of course, it takes very little time to crush the worst offenders, and the consequences of looking the other way and hoping for the private sector to address the government’s shortcomings are fairly evident to most people now.
“My quibble is the statement in its totality: that a “significant number” of patents would be invalidated.”
Under any reasonable definition of “significant” it’s a true statement. What do the data say? Over the last ten years, how many “unintentionally abandoned” patents have been revived?
“It is precisely that kind of loose talk that the admittedly anti-patent crowd uses to influence public opinion, and not to the benefit of innovation.”
What influences the public is (1) the filing and issuance of garbage and (2) the macho posturing of patent bullies who sneer at anyone who dares to mention the fact that the garbage is being continually produced and is right out in the open for anyone to see.
Dennis, why do you think this case should be heard en banc? As far as I can see, the actual holding is pretty narrow–“improper revival” is not a defence. The argument for rehearing is that the broad reasoning implicates all manner of well-established non-statuory defences (inequitable conduct, double patenting, prosecution laches, violations of a terminal disclaimer, etc.). But this parade of horribles cannot occur because those defenses are already established. So granting that Aristocrat’s reasoning is exceptionally weak in some respects, it still doesn’t strike me as a case with real consequences.
“How could failure to pay a maintenance fee no longer be a defense? If the maintenance fee is not paid, then it is no longer a “patent.”
Arguably, the words “the patent will expire” in 35 USC 41 creates a defense under 282. However, a PTO revival that is allegedly within the grace period may not be reviewable based on this case.
I think the comments suggesting that substantive issues have been made unreviewable by the CAFC decision are off base. Nobody believes that Aristocrat makes an examiner’s missing of prior art unreviewable. Further, I don’t believe there is a serious question argument that missed non-statutory double patenting rejections are now unreviewable.
I completely support reviewing this case en banc. I think making everything unreviewable creates some mischief that is best avoided. But I also think some of the advocacy I see for that position is way over the top.
Dennis wrote: “It calls into question whether traditional invalidity defenses such as nonstatutory double patenting and improper inventorship remain.”
Improper inventorship would still remain a defense under 102(f). I’d have to go back and read up but I figured non-statutory double patenting would be considered a judicially-created doctrine grounded in 101’s “may receive A patent”.
How could failure to pay a maintenance fee no longer be a defense? If the maintenance fee is not paid, then it is no longer a “patent.”
Does anyone know what % of en banc petitions are granted? I am happy with the decision and hope the CAFC leaves well enough alone. Does anyone also know what % of en banc rehearings reverse the prior CAFC decision? I would think it would be tough, since 3 justices probably don’t want to lose credibility and change their position.
I’m wondering if I’m missing something from 35 USC 41(a)(7).
There seems to be a disconnect between the fees and other portions of the title. For example, it provides for revival based on unintentionally delayed payment of issue fee, while section 151 only provides for unavoidable.
It doesn’t seem to appear that the section makes a distinction with unintentional abandonment of 371 applications (note, I’m not talking about payment of issue fees here), and its an ambiguity that could go in favor of Aristocrat (then again, 371 is entry into national phase, and not an actual application).
However, if “application for a patent” does not apply to 371, it would seem that section 41(a)(7) would apply if the PCT application was filed under 111(a). As the standard for unintentional abandonment is really just handing over the petition fee, going the 111(a) route could provide months (or even years) beyond the 371 deadline. Another possible advantage to filing via 111(a)?
Dear Max:
I don’t demur from the thought that invalid claims can issue from the Office – reality isn’t perfect. My quibble is the statement in its totality: that a “significant number” of patents would be invalidated. It is precisely that kind of loose talk that the admittedly anti-patent crowd uses to influence public opinion, and not to the benefit of innovation.
Mr Noonan, I am surprised that anybody can demur from the proposition that invalid claims issue out of the PTO, from time to time, at least while the definition of the prior art is what it is. The PTO Examiners are simply not in possession of the totality of the art when they issue the claims. Just because somebody recognises that reality doesn’t render them “anti patent” does it? On the contrary, the patents system can prosper only when the public approves of it. Public approval depends on those within the patents system never losing sight of reality. It strikes me that Dennis is a better champion of patents than most contributers to this blog.
“It is clear that a significant number of issued patents would be found invalid if challenged.”
You are clearly with the anti-patent Zeitgeist, Dennis, but such a comment requires a little more support, or at least context. Do you mean “under IGT’s interpretation of the statute” or more generally? What is your definition of “significant number?”
I totally support the notion of PGE since a “perfect” examination is an unattainable myth. I also agree with your point of challenging legal error in an issued patent.
However I am more for correction in the nature of “perfection” or “cure” rather than the much harsher “invalidity” consequence that I believe runs afoul of established notions of equity. Assuming such legal error could more easily be challenged, in such a regime, if a defendant were to successfully challenge an asserted patent on such a ground, what would be the consequence?
Even if the petition is granted (which I have my doubts), I doubt the Federal Circuit is going to provide a laundry list of challengable defects.
AllSeeing — You may be right on the underlying merits of this case. A-Cat only missed a date by a day and the statute arguably allows for revival of unintentionally abandoned patents.
My point is that the Patent Office does a good job weeding out most junk examining patents. Lets call it PGE (pretty good examination). However, more than a handful of patents issue every week which are in tension with the law. An accused infringer should be allowed to challenge those patents for their legal error.
In a famous article titled “Rational Ignorance,” Mark Lemely gives a nice explanation of why we it would be a waste of money to ensure that initial patent examination is leakproof. The bottom line of the article is that most patents are not worth the time. Once in litigation or somehow creating a ‘cloud,’ challenges that are more ‘torched earth’ style become worthwhile.
Dennis writes: “…no challenge is available in a variety of potential cases…” “That result is wrong from a policy perspective”
Can you explain why? I think as a matter of policy and equity, patents like this one, particularly 371 applications shouldn’t be shot down due to relatively minor procedural defects. 371(f) provides that “At the express request of the applicant, the national stage of processing may be commenced at any time at which the application is in order for such purpose and the applicable requirements of subsection (c) of this section have been complied with.”
Everyone knows that PCT dates are soft and squishy…
IGT argues that “An applicant who abandoned its application without reviving it under the statutory mandated standard” is not entitled to a patent.
But IMO the statute does not “mandate” a particular standard for revival. IGT appears to ignore that the statute gives the Director discretion to determine what constitutes “unavoidable” delay. Thus, if an applicant characterizes the delay as “unintentional” the Director may still properly find that the reasons are satisfactory to establish that the delay was unavoidable.
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