PatentlyO (Prof. Dennis Crouch) blogs about the cert petition in IGT v. Aristocrat Tech of Australia, which has also drawn in an amicus petition from various tech industry giants (Google, Microsoft, Dell, etc.):
Every year, the PTO revives hundreds of unintentionally abandoned patent applications, and about half of those eventually issue as patents ....
In court, IGT has argued the revival was improper and thus, that the patents are invalid[, but t]he Federal Circuit ... [held] that improper revival is not a "cognizable defense" to patent infringement ... [because it] did not fall within any of the four categories of [statutory] defenses .... The case implicitly calls into question other traditional defenses such as nonstatutory double patenting, improper inventorship....
Of course, a defendant should have some mechanism for challenging an improperly revived patent -- either through the courts or a post-grant procedure at the PTO. Under the Federal Circuit's rule, however, a typical defendant would have no recourse. (Two potential avenues could be (1) inequitable conduct in the revival and (2) trigger an interference.)
Leaving the PTO's revival grant's unchallengeable is particularly troublesome because of the serious lack of transparency in the petitions office. Pre-grant revivals are tucked away in individual prosecution file wrappers and cannot be searched in any public database. Thus, the public is left without any check on the system at either the micro or macro level....
In several ways, this cases parallels the other recent Supreme Court patent cases such as KSR, eBay, and MedImmune. At least as history tells the story, each of those cases began with a rigid rule created by the Federal Circuit to favor patent holders. In each case, the Supreme Court softened the rule to add flexibility in a way that favors the defendants. In KSR, the rigid TSM test for applying multiple references during obviousness analysis was relaxed. In eBay, the rule strongly favoring injunctive relief was relaxed. And, in MedImmune, the rule setting a reasonable apprehension of a lawsuit as a condition precedent to a declaratory judgment action was also relaxed. In the IGT case at hand, the Supreme Court has the opportunity to tear down another rigid application of the law and open a new avenue for defendants to challenge a patent holder's rights....
Disclosure: The lawyers on the petition are colleagues of mine at Mayer Brown LLP.
together.
The Federal Circuit has its flaws, but it also has more than enough drive-by critics.
Umm, krs??? I don't think you are following what's going on here. The CAFC did not uphold any PTO practice at all. It held that Article III courts have no authority to review, in the context of an infringement or DJ action, whether a patent is valid in a particular circumstance, ie where an applicant has revived an application that was purportedly unitentionally abandoned. The CAFC did not hold that the PTO was doing the right thing. It simply held that courts don't have the authority to determine that.
And, in my opinion and the opinion of I would guess most people who practice patent litigation (as opposed to prosecution), the CAFC's case law in recent years is a nightmare that has been unmoored to federal statutes and Supreme Court precedent. The recent reversals by the Supremes have all been obviously correct (no significant dissents I can think of). And there is still much more work to do -- such as the CAFC's absurd interpretation of Markman as meaning that claim construction is always an issue of law that involves no factual determinations whatsoever, when Markman simply held that interpretation of a patent is a judicial function - not a fact/law issue (much like equitable issues are for judges, but still involve findings of fact by a district judge reviewed for clear error by an appeals court).
"The question here is whether the interpretation of a so-called patent claim, the portion of the patent document that defines the scope of the patentee's rights, is a matter of law reserved entirely for the court." Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996) (emphasis added).
Here are some examples from Markman, culled from others:
Markman, 116 S. Ct. at 1390 (calling the construction of a term of art following receipt of evidence a “mongrel practice”); id. at 1395 (suggesting that claim construction “‘falls somewhere between a pristine legal standard and a single historical fact’” ); id. at 1396 (“notwithstanding [claim construction’s] evidentiary underpinnings”).
The Court repeatedly refused to describe the questions presented by claim construction as either purely issues of fact or law: “[b]ut the sounder course, when available, is to classify a mongrel practice,” “no clear answers,” “in theory there could be a case,” “leaves us doubtful,” “[i]n the main,” “[w]e accordingly think there is sufficient reason to treat construction of terms of art like many other responsibilities that we ceded to a judge,” “independent reason to allocate,” “treating interpretive issues as purely legal will promote . . . .” Markman, 116 S. Ct. 1390-96
Seems to me fairly clear (or at least a highly plausible and non-absurd interpretation) that they were saying "it is best described in reality as a mongrel practice, but we are going to hold it purely legal, and lower courts must accordingly follow this fiction whether they like it or not."
That said, I don't think that counts as a "nightmare"
I'll reread the decision. Maybe I'm being a drive-by defender.
Add to this that the USPTO is totally insensitive to this, attempting to impose rules that would make this much worse, such as IDS requirements, where the reason for the flood of IDS's was claims of inequitable conduct, and the USPTO response was to greatly increase the possibility of such claims by requiring that if more than a few references were cited, the attorney/applicant would have to specifically point out the relevance of the reference.
So, at least in this one small instance, we don't have to worry that we screwed up the paperwork just a tiny bit, resulting in a multi-million dollar malpractice claim.
Linn also notes that Supreme Court precedent would seem to limit inequitable conduct to actual fraud. Kingsdown is more in line with this. Current CAFC jurisprudence allows a much lower standard, where if it is material enough, you can pretty much presume intent to deceive, which is pretty ridiculous.
The problem isn't with this case (it isn't really a "screwed up the paperwork a tiny bit" if you abandoned a case -- blowing deadlines is what causes most malpractice for patent lawyers, and revivals are almost always because of blown deadlines), it's with the inequitable conduct line of cases. I'm hoping someone is able to appeal to SCOTUS a case where there is no actual fraud and no clear and convincing evidence of intent to deceive yet the CAFC affirms inequitable conduct anyways.
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