Under some conditions, a patentee may revive a patent that has lapsed for failure to timely pay the required maintenance fees if the patentee shows its failure to pay the maintenance fee was unintentional or unavoidable.1 Accused infringers facing infringement claims based on a revived patent may seek to challenge whether the PTO properly permitted the patentee to revive the lapsed patent. District courts have reached opposite conclusions as to whether an accused infringer may assert an erroneous revival of a lapsed patent as an affirmative defense to a charge of infringement. Some courts have allowed the defense while others have held that improper revival is not an available affirmative defense for an accused infringer.2

The Federal Circuit has not yet addressed whether an accused infringer may assert as an affirmative defense to a charge of infringement that the PTO improperly permitted the patentee to revive a lapsed patent. But, in its 2008 opinion of Aristocrat Technology Australia PTY Ltd.,3 the court held that an accused infringer cannot assert, as an affirmative defense, the alleged improper revival of an abandoned patent application. The Aristocrat court explained that "[b]ecause the proper revival of an abandoned application is neither a fact or act made a defense by title 35 nor a ground specified in part II of title 35 as a condition for patentability, we hold that improper revival may not be asserted as a defense in an action involving the validity or infringement of a patent."

In Abstrax, Inc. v. Dell, Inc., 2009 WL 3254973 (E.D. Tex. Oct. 7, 2009), an accused infringer presented a creative, but unsuccessful, theory to raise improper revival of a lapsed patent as an affirmative defense and avoid Aristocrat. There, the accused infringer argued that by allowing the patent to lapse as a result of not paying the required maintenance fee, the patentee had "abandoned" the patent within the meaning of 35 U.S.C. § 102(c). Section 102(c) provides a person shall be entitled to a patent unless "he has abandoned the invention."4 As this subsection does not address novelty, it falls within the "Loss of Right to Patent" portion of § 102's title "Conditions for Patentability; Novelty and Loss of Right to Patent."

Overruling the accused infringer's objection to the magistrate judge's recommendation to dismiss the improper revival defense, the district court judge in Abstrax agreed with the magistrate judge's analysis that Aristocrat applies to preclude asserting improper revival of a lapsed patent as an affirmative defense. The district court reasoned that, just like in Aristocrat, the challenge to the PTO's revival of the lapsed patent did not challenge a condition of patentability of the patent. Id. at *2.5 Consequently, the accused infringer had to challenge the PTO's revival, if at all, by filing an action directly against the PTO under the Administrative Procedure Act; something it had done. Id. The district court noted, however, that to the extent the accused infringer alleged that the patentee committed inequitable conduct in connection with its revival petition, the court could consider those allegations as part of the accused infringer's inequitable conduct defense. Id.

Unfortunately, the Abstrax court did not provide a detailed analysis of its rejection of the accused infringer's argument based on § 102(c) issue; perhaps because there is very little modern precedent addressing § 102(c) and the Federal Circuit did not address the potential applicability of § 102(c) in Aristocrat. Arguably, old Supreme Court precedent, if broadly construed, could give some support to the accused infringer's § 102(c) argument. For example the Supreme Court has stated that "[i]t ... cannot be denied, that an inventor may abandon his invention, and surrender or dedicate it to the public. This inchoate right, thus once gone, cannot afterwards be resumed at his pleasure; for, where gifts are once made to the public in this way, they become absolute."6 The Court has also explained that "[a]bandonment may be evidenced by the express and voluntary declaration of the inventor; it may be inferred from negligence or unexplained delay in making application for patent; ..." (emphasis added).7

Thus, given that i) the issue of whether to revive a patent turns, in part, on whether the patentee's failure to timely pay a required maintenance fee was accidental or intentional8 and ii) § 102(c) arguably results in the "loss of right to patent" if there is a deliberate act showing abandonment of the invention;9 the question of whether revival of a lapsed patent implicates § 102(c) could merit some consideration by the Federal Circuit.

Nonetheless, at least two significant arguments counsel against treating an improper revival of a lapsed as falling within the scope of § 102(c). First, the patent law draws a distinction between abandoning an "invention," as specified in § 102(c), and abandoning the patent rights associated with an invention. Allowing a patent to lapse by not paying maintenance fees results in the abandonment of the patent rights associated with the invention, but does not necessarily show an abandonment of the invention itself.10 Such a view of § 102(c) could show that § 102(c) is not implicated at all where the PTO revives a lapsed patent. Second, if § 102(c) is given a construction such that it applies to acts done after the patent issues, it could in effect impose a requirement on patentees to practice the invention during the entire patent term or risk losing their patent rights through a finding of post-issue abandonment. No case law has ever construed U.S. patent law as requiring patentees to practice their patented invention after the patent issues or risk losing their patent rights. Just the opposite, the law has expressly held that patentees do not have to practice their inventions to enforce their patent rights.11 Accordingly, its appears that the Abstrax court reached a proper result in ignoring the accused infringer's attempt to rely on § 102(c) to justify its improper revival defense.

The foregoing first appeared in the November 2009 issue of Patent Happenings available at www.PatentHappenings.com Other case summaries from that issue include:

  • Status Report – Pleading patent infringement allegations in view of Iqbal, Twombly, McZeal, Colida, and Form 18
  • Questioning deponent as to whether it changed the design of an accused product in response to receiving an opinion of counsel improperly invaded the attorney-client privilege
  • Patent infringement claim dismissed because it conflicted with a national security law that compelled the accused infringer to perform the acts accused of infringement
  • Northern District of Illinois formally adopts local patent rules

About the Author

Robert A. Matthews, Jr . provides patent-law consulting services to corporate counsel and trial counsel. Specifically, he helps counsel analyze and brief the myriad of substantive and procedural legal issues arising in patent infringement litigations. Matthews authors the Annotated Patent Digest, an eight-volume patent treatise published by West and available on Westlaw, the Patent Jury Instruction Handbook, and the monthly newsletter Patent Happenings®. Matthews has assisted clients with patent matters before the U.S. Supreme Court (KSR and Bilski), the Federal Circuit, the ITC and numerous federal district courts. Further information on the patent-law consulting services Matthews offers, plus a collection of patent-litigation resources, can be found at www.MatthewsPatentLaw.com. Matthews can be reached at 434-525-1141 or by e-mail sent to ram@MatthewsPatentLaw.com.

Footnotes

1.See generally, 35 U.S.C. § 41(c); Robert A. Matthews, Jr., Annotated Patent Digest § 24:23 Requirement to Pay Maintenance Fees and § 24:24 Reviving Lapsed Patents [hereinafer APD].

2.See APD § 24:26 Erroneous Revival as an Affirmative Defense (collecting cases).

3.Aristocrat Tech. Australia PTY Ltd. v. Int'l Game Technology, 543 F.3d 657, 663 (Fed. Cir. 2008); see generally, APD § 16:4 Reviving Abandoned Applications and Challenges Thereto.

4.See generally, APD § 17:186 Abandonment of the Invention Under § 102(c).

5.The Eastern District of Texas had previously followed this same rationale in 2001 to rule that it lacked the power to consider an improper revival defense in a patent infringement suit. Ferguson Beauregard/Logic Controls v. Mega Sys., L.L.C., 2001 WL 34771614, *92 (E.D. Tex. Dec. 13, 2001) ("The exemplary 'sanctions' listed in the rule would seem to broadly permit the PTO to revisit whether the petition to accept the late payment of maintenance fees should have been granted, but neither the rules nor the statute confirm any power on this Court to deem the PTO's grant of that petition 'improper' or otherwise reverse the PTO's actions. . . . Ferguson Beauregard's argument that the '048 patent was 'improperly' revived is noted, but Ferguson Beauregard points to no statutory or other authority that would permit this Court to take any action as a result.").

6.Pennock v. Dialogue, 27 U.S. 1, 16 (1829).

7.Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5, 15 (1939).

8.The revival statute specifies that the PTO may revive a patent only if patentee shows its delay in paying the maintenance fee was unintentional or unavoidable, i.e., it was not a deliberate act. 35 U.S.C. § 41(c)(1).

9.The Federal Circuit has yet to address § 102(c) in substantive detail. Other courts and the PTO have expressed the view that § 102(c) abandonment requires a deliberate act. E.g., Metallizing Engineering Co. v. Kenyon Bearing etc. Co., 153 F.2d 516, 520 (2d Cir. 1946) (Learned Hand, J.) ("Such a forfeiture has nothing to do with abandonment, which presupposes a deliberate, though not necessarily an express, surrender of any right to a patent."); Moore v. United States, 194 USPQ 423, 428 (Ct. Cl. (Trial Ct. Div.) 1977) ("Abandonment, under 35 U.S.C. § 102(c), presupposes a deliberate, though not necessarily an express, surrender of any rights to a patent. To abandon the invention, the inventor must intend a dedication to the public. This intent may be express, as by a declaration by the inventor, or implied as by the actions or inactions of the inventor."); Marvin Glass and Associates v. Sears, Roebuck & Co., 318 F. Supp. 1089, 1102-03 (S.D. Tex. 1970) ("Abandonment is a deliberate dedication of the invention to the public, either expressly or by necessary implication.") aff'd in part on other grounds, 448 F.2d 60 (5th Cir. 1971); MPEP § 2134 (8th ed., July 2009) ("Abandonment under 35 U.S.C. 102(c) requires a deliberate, though not necessarily express, surrender of any rights to a patent. To abandon the invention the inventor must intend a dedication to the public. Such dedication may be either express or implied, by actions or inactions of the inventor. Delay alone is not sufficient to infer the requisite intent to abandon."). (Emphases added).

10.See Checkpoint Systems v. United States Int'l Trade Comm., 54 F.3d 756, 763 (Fed. Cir. 1995) (prior inventor did not abandoned invention when it opted not to file a patent application, and hence prior invention could be § 102(g) prior art against later patent).

11.Hartford-Empire Co. v. United States, 323 U.S. 386, 433 (1945) ("Congress has repeatedly been asked, and has refused, to change the statutory policy by imposing a forfeiture or by a provision for compulsory licensing if the patent is not used within a specified time."); Rite-Hite Corp. v. Kelly Co., Inc., 56 F.3d 1538, 1547 (Fed. Cir. 1995) (en banc) ("There is no requirement in this country that a patentee make, use, or sell its patented invention."); see generally, APD § 1:14 No Requirement that Patent Holder Practice Patent.

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