Can't Second Guess PTO Administrative Decisions During Prosecution

Aristocrat Technologies Australia Pty Limited v. International Game Technology [2008-1016] (September 22, 2008) [LINN, Newman, Bryson] The Federal Circuit reversed summary judgment of invalidity on the grounds that U.S. Patent No. 7,056,215 was improperly revived.
DISCUSSION: The district court held that the U.S. Patent and Trademark Office “improperly revived” the patent after it was abandoned during prosecution, and therefore held it (and the continuation patent that followed it) invalid on summary judgment. The Federal Circuit concluded that “improper revival” may not be raised as a defense in an action involving the validity or infringement of a patent. The Federal Circuit said that Section 282 of title 35 provides a catalog of defenses available in an action challenging the validity or infringement of a patent. The Federal Circuit held that “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.” The Federal Circuit explained that once a patent has issued, the procedural minutiae of prosecution has little relevance to the metes and bounds of the patentee’s right to exclude. The Federal Circuit was concerned that if any prosecution irregularity or procedural lapse, however minor, 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. However if the irregularity involves an “affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive,” it may rise to the level of inequitable conduct, and is redressible under that framework.