The Flawed Revival of a Patent Application; Not Your Best Infringement Defense: Aristocrat Techs. Austl. Pty v. Int'l Game Tech. & Igt, 2008 U.S. App. LEXIS 20060 (Fed. Cir. 2008)
When you go into a patent fight, don’t think you can put a target on the application’s revival because that won’t cut it. The process of reviving a patent application might be flawed, but in light of Aristocrat Techs. Austl. Pty v. Int'l Game Tech. & Igt, 2008 U.S. App. LEXIS 20060 (Fed. Cir. 2008), it won’t provide a viable infringement defense.
In Aristocrat, Aristocrat Technologies was a day late in filing a required application fee, and because of this, the U.S. Patent and Trademark Office (PTO) mailed a notice of abandonment to Aristocrat. Aristocrat later filed a petition to revive the patent application under 37 C.F.R. § 1.137(b), claiming that the delay in paying the fee was "unintentional.” After the PTO granted the petition to revive, Aristocrat resumed patent prosecution, and the patent issued.
Thereafter, Aristocrat filed an infringement action against IGT, which argued that the patent 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." Specifically, IGT argued that the PTO "improperly revived" the patent application by requiring Aristocrat only to show "unintentional delay." Relying on 35 U.S.C. § 282, the district court granted IGT summary judgment.
On appeal, the threshold issue was whether "improper revival" could be raised as an invalidity defense in a patent action involving infringement or validity. In addressing this issue, the court examined § 282, which provides a catalog of defenses available in a patent action. At issue were the second and fourth defenses:
(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,
(4) Any other fact or act made a defense by this title.
Regarding § 282(2), the court noted that “[w]hile 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.” Consequently, the court held that “[s]ection 282(2), by virtue of its applicability to ‘condition[s] for patentability,’ relates only to defenses of invalidity for lack of utility and eligibility, novelty, and nonobviousness, and does not encompass a defense based upon the alleged improper revival of a patent application.”
As for § 282(4), the catch-all provision, the court focused on the following language: “fact or act made a defense by" title 35. The court stated:
The salient question, then, 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.
In reversing, the court held that:
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.