Posted by Eugene Volokh:
Interesting Patent Case:
http://volokh.com/archives/archive_2009_03_29-2009_04_04.shtml#1238341360
[1]PatentlyO (Prof. Dennis Crouch) blogs about the cert petition in
IGT v. Aristocrat Tech of Australia, which has also drawn in an amicus
petition from various tech industry giants (Google, Microsoft, Dell,
etc.):
Every year, the PTO revives hundreds of unintentionally abandoned
patent applications, and about half of those eventually issue as
patents ....
In court, IGT has argued the revival was improper and thus, that
the patents are invalid[, but t]he Federal Circuit ... [held] that
improper revival is not a "cognizable defense" to patent
infringement ... [because it] did not fall within any of the four
categories of [statutory] defenses .... The case implicitly calls
into question other traditional defenses such as nonstatutory
double patenting, improper inventorship....
Of course, a defendant should have some mechanism for challenging
an improperly revived patent -- either through the courts or a
post-grant procedure at the PTO. Under the Federal Circuit's rule,
however, a typical defendant would have no recourse. (Two potential
avenues could be (1) inequitable conduct in the revival and (2)
trigger an interference.)
Leaving the PTO's revival grant's unchallengeable is particularly
troublesome because of the serious lack of transparency in the
petitions office. Pre-grant revivals are tucked away in individual
prosecution file wrappers and cannot be searched in any public
database. Thus, the public is left without any check on the system
at either the micro or macro level....
In several ways, this cases parallels the other recent Supreme
Court patent cases such as KSR, eBay, and MedImmune. At least as
history tells the story, each of those cases began with a rigid
rule created by the Federal Circuit to favor patent holders. In
each case, the Supreme Court softened the rule to add flexibility
in a way that favors the defendants. In KSR, the rigid TSM test for
applying multiple references during obviousness analysis was
relaxed. In eBay, the rule strongly favoring injunctive relief was
relaxed. And, in MedImmune, the rule setting a reasonable
apprehension of a lawsuit as a condition precedent to a declaratory
judgment action was also relaxed. In the IGT case at hand, the
Supreme Court has the opportunity to tear down another rigid
application of the law and open a new avenue for defendants to
challenge a patent holder's rights....
Disclosure: The lawyers on the petition are colleagues of mine at
Mayer Brown LLP.
References
1.
http://www.patentlyo.com/patent/2009/03/defenses-to-patent-infringement.html
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