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Unintended irony September 26, 2008

Posted by Brian Schar in Federal Circuit, General, Patent prosecution.

Earlier this week, the Federal Circuit decided Aristocrat Technologies Australia Pty Ltd. v. International Game Technology.  Aristocrat had revived an abandoned application on the grounds of unintentional, not unavoidable, delay.  IGT contended that Aristocrat was required to revive on the grounds of unavoidable delay, and by failing to do so rendered the patent invalid.  (The opinion does not set forth the fact pattern or IGT’s argument – likely because they were ultimately irrelevant.  That’s too bad, because I’m very curious about IGT’s legal theory.)  The Court held that “improper revival” – revival of an abandoned application that occured contrary to procedure, regulation or law – is not a defense in an action “involving the validity or infringement of a patent.”

Here comes the irony: One reason why “improper revival” was held not to be a defense is: “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.”  I thought that sentence pretty much summed up the current state of patent litigation in the US!

Of course, there’s always an exception for inequitable conduct: “We wish to stress, however, as we did in Magnivision, that where the procedural 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.” 

So Aristocrat holds that there’s no such thing as “improper revival,” until it’s improper enough to be inequitable, and then there may be such a thing as “improper revival.”  Give yourself the weekend to wrap your head around that.


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