On September 22, 2008, the United States Court of Appeals for the Federal Circuit ruled that “improper revival” may not be raised as a defense in an action involving the validity or infringement of a patent.  Aristocrat Technologies Australia PTY Limited and Aristocrat Technologies, Inc. v. International Game Technology and IGT, No. 2008-1016 (Fed. Circ. September 22, 2008). Despite arguments that after a patent application is deemed abandoned for failure to pay a fee, the Applicant is required to show that the failure to pay the fee was “unavoidable” and not merely “unintentional,” the Federal Circuit reversed the district court’s grant of summary judgment finding “improper revival” to be a defense to validity or infringement. The Federal Circuit remanded for proceeding consistent with the opinion. 

Aristocrat Technologies Australia Pty Limited (“ATA”) and International Game Technology and IGT (collectively, “IGT”) compete in the market for electronic gaming machines. ATA filed a PCT application in Australia on July 8, 1999, and the application was published on January 21, 1999. In order to enter the U.S. National Stage, ATA was required to pay the entry fee by January 10, 2000, which was 18 months from the filing date of the PCT application. However, ATA paid the fee on January 11, 2000, which was one day late.  The PTO mailed a Notice of Abandonment to ATA, and ATA’s application remained abandoned until ATA filed a Petition for Revival arguing “unintentional” abandonment. The Petition was granted on September 3, 2002. The application was thus revived, and two applications subsequently issued as U.S. Patent Nos. 7,056,215 (‘215 patent) and 7,108,603.  In 2006, ATA sued IGT for infringement of the ‘215 patent.  As a defense, IGT argued in a Motion for Summary Judgment that the patent application was improperly revived because ATA failed to show that the abandonment was “unavoidable,” and thus the ‘215 patent was invalid and unenforceable. The district court granted IGT’s motion to require ATA to show that its delay was “unavoidable,” not merely that its delay was “unintentional.” ATA appealed the decision. 

The issue of whether “improper revival” may be raised as an invalidity defense in an action involving the infringement or validity of a patent was a case of first impression. IGT argued that Congress truly intended to permit any provision of Title 35 to constitute a defense in an action involving the validity or infringement of a patent. The district court, relying on 35 U.S.C. §§ 282(2) and (4), decided that question affirmatively. The question for the appeal was whether improper revival is made a defense by Title 35. 

The Federal Circuit found that Congress made it clear in various provisions of the statute when it intended to create a defense of invalidity or non-infringement in Section 282 of Title 35, but provided no such intention in the statutes pertaining to revival of abandoned applications. The Federal Circuit concluded that absent such a stated intention, the same cannot be a defense. The conclusion that improper revival is not a defense comports with the approach taken by the Federal Circuit in Magnivision, Inc. v. Bonneau Co., 115 F.3d 956 (Fed. Cir. 1997), in which the Federal Circuit concluded that “[p]rocedural lapses during examination, should they occur, do not provide grounds of invalidity. Absent proof of inequitable conduct, the examiner’s or the applicant’s absolute compliance with the internal rules of patent examination becomes irrelevant after the patent has issued.”

The Federal Circuit stated that once a patent has issued, the “procedural minutiae of prosecution” have little relevance to the metes and bounds of the patentee’s right to exclude, and that if any prosecution irregularity or procedural lapse became grist for a later assertion of invalidity, accused infringers would “inundate the courts with arguments relating to every minor transgression they could comb from the file wrapper.”

The Federal Circuit reaffirmed, however, that where the procedural irregularity involves an “affirmative misrepresentation of a material fact, failure to disclose information, or submission of false material information, coupled with an intent to deceive,” the irregularity may rise to the level of inequitable conduct, and is thus redressible under that framework.