Aristocrat Technologies Australia v. International Game Technologies (IGT) (CAFC 2008-1016)

Aristocrat filed in its native Australia first, then, belatedly, by a day, the U.S.

The U.S. Patent and Trademark Office ("PTO") did not receive Aristocrat's national filing fee until January 11, 2000--one day late. The PTO consequently mailed a notice of abandonment to Aristocrat, which stated, among other things, that Aristocrat "may wish to consider filing a petition to the Commissioner under 37 CFR 1.137(a) or (b) requesting that the application be revived."

After wrongly filing a petition to correct the filing date, Aristocrat filed the proper revival petition, claiming the lapse as "unintentional".

In district court, IGT "argued that the '215 patent was invalid because, after it was abandoned, Aristocrat was required to show that its delay was "unavoidable" in order to revive the application, not merely that its delay was "unintentional." Thus, according to IGT, the PTO "improperly revived" the '215 patent application by requiring Aristocrat only to show "unintentional delay.""

The district court, smitten by the petty tiff, snuffed the entire patent family. The CAFC retorted: "c'mon... that was no patent defense."

The threshold issue in this appeal is whether "improper revival" may be raised as an invalidity defense in an action involving the infringement or validity of a patent... We conclude that "improper revival" may not be raised as a defense in an action involving the validity or infringement of a patent.

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.

Our conclusion that improper revival is not a defense comports with the approach we took in Magnivision, Inc. v. Bonneau Co., 115 F.3d 956 (Fed. Cir. 1997), which we continue to believe is a sound one. In that case, we 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." Id. at 960; see also id. ("Imperfection in patent examination, whether by the examiner or the applicant, does not create a new defense called 'prosecution irregularities' and does not displace the experience-based criteria of Kingsdown [ Medical Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867 (Fed. Cir. 1988)].").

As in, let's not wipe out patents on trivialities. But deceit, that's another class of infraction.

There is good reason not to permit procedural irregularities4 during prosecution, such as the one at issue here, to provide a basis for invalidity. 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. 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. This deluge would only detract focus from the important legal issues to be resolved--primarily, infringement and invalidity. 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. See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1378 (Fed. Cir. 2008) (citations omitted); cf. Ferguson Beauregard/Logic Controls v. Mega Sys., LLC, 350 F.3d 1327, 1343-44 (Fed. Cir. 2003) (holding that the accused infringer did not state valid claim for relief for "improper revival" following non-payment of maintenance fee where it failed to plead inequitable conduct).

Reversed and remanded.