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Improper revival cannot be raised as grounds for invalidity in an infringement action

By McKee, Voorhees & Sease, P.L.C.

In a decision yesterday, the Federal Circuit reversed a district court's summary judgment of invalidity.  The district court held that the application that led to the patent-in-suit was abandoned, and the USPTO improperly revived it, rendering the patent invalid.  The applicant missed the 30-month PCT national phase deadline by one day, but successfully petitioned to have the application revived for unintentional abandonment.  The district court held the USPTO should have applied the unavoidable abandonment standard, and held the patent was "improperly revived," and therefore invalid.  The court also held a related patent invalid on the basis that the first was prior art to the second, anticipating the second patent's claims.

The Federal Circuit reversed.  The court held "improper revival" is not a cognizable defense to an infringement action under § 282, because it is not a "condition for patentability," nor is it "made a defense" by another section of Title 35.  Therefore the patent should not have been held invalid on that basis, and, by extension, the second patent should not have been held to be invalidated by the first.

The Federal Circuit summed up the issue by quoting its decision in Magnivision, Inc. v. Bonneau Co.:

Procedural 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.

More detail of Aristocrat Techs. Austl. PTY Ltd. v. Int'l Game Tech. after the jump.

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Full post as published by FileWrapper on September 23, 2008 (boomark / email).