The Volokh Conspiracy - Interesting Patent Case:

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.

	[Eugene Volokh, March 29, 2009 at 11:42am] Trackbacks Interesting Patent Case: 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.