A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
SawStop Holding LLC v. Vidal, Nos. 2021-1537, -2105 (Fed. Cir. (E.D. Va.) Sept. 14, 2022). Opinion by Linn, joined by Newman and Chen.
The American Inventors Protection Act of 1999 directs the PTO to grant patent term adjustment (PTA) to offset three categories of prosecution delay, one of which involves delay associated with appellate review. Specifically, under 35 U.S.C. § 154(b)(1)(C), if a patent’s issuance is delayed due to “appellate review by the Patent Trial and Appeal Board or by a Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability,” then the patent’s term is extended for each day of that appellate review.
SawStop sought but was denied PTA for two patents based on appellate review associated with the patents.
During prosecution of the first patent, the examiner issued a final rejection based on obviousness. On appeal, the Board disagreed with the examiner’s rejection but entered a new rejection. SawStop then filed several amendments and the patent issued. The PTO denied SawStop’s PTA request, and so SawStop filed suit in district court to challenge the denial. The court granted summary judgment to the PTO because the issued patent claim had been subject to a new rejection by the Board, and thus did not issue “under a decision in the review reversing an adverse determination of patentability” as required by § 154(b)(1)(C).
During prosecution of the second patent, the examiner rejected independent claim 1 based on both anticipation and double patenting, and rejected dependent claim 2 for anticipation. On appeal, the Board affirmed both rejections of claim 1 but reversed the rejection of claim 2, rendering it patentable. SawStop then filed suit in district court challenging only the Board’s anticipation rejection of claim 1 without addressing the double-patenting rejection. The court reversed the anticipation rejection and remanded, where the Board noted the outstanding double-patenting rejection. In response, SawStop rewrote dependent claim 2 in independent form. The PTO then denied PTA for the delay associated with SawStop’s action in the district court, and so SawStop again filed suit in district court to challenge the denial. The court granted summary judgment to the PTO because the earlier district court action did not involve “reversing an adverse determination of patentability” as required by § 154(b)(1)(C).
The Federal Circuit affirmed both rulings. The court began by emphasizing that the “unambiguous” language of § 154(b)(1)(C) “imposes two requirements: that an adverse determination of patentability be reversed, and that the application reviewed in that appeal issue as a patent as a result of that reversal.”
Addressing the first patent, the Federal Circuit explained that PTA was inappropriate because “the adverse determination of unpatentability remained before and after the appeal to the Board,” and therefore the appeal “resulted in no substantive change in the patentability” of the claim. The language of the statute, by comparison, requires the reversal of a “determination of patentability.” The court held that this language “requires a determination that the claim is substantively allowable, not just free of a particular rejection.” In addition, the patent had issued only after further claim amendments by SawStop. Thus, the claim did not “issue under a decision in the review” since the claim as issued was not the same. The Federal Circuit held that this statutory requirement “is not met if the claim that ultimately issues differs substantively from the claim under review.”
Regarding the second patent, the Federal Circuit explained that claim 1 was “unpatentable both before the appeal (because of anticipation and double patenting) and after the appeal (because of double patenting).” Thus, “the appellate decision did not reverse an adverse determination of patentability.” Also, the patent “did not issue under a decision in the review.” Therefore, the district court correctly denied PTA.
Polaris Innovations Ltd. v. Brent, Nos. 2019-1483, -1484 (Fed. Cir. (PTAB) Sept. 15, 2022). Opinion by Stoll, joined by Prost and Chen.
NVIDIA initiated IPR proceedings challenging two patents owned by Polaris. The Patent Trial and Appeal Board issued final written decisions finding all challenged claims unpatentable, and Polaris appealed. Without reaching the merits, the Federal Circuit vacated the Board’s decisions and remanded in light of its decision in Arthrex I due to Appointments Clause issues.
On remand, the Board administratively suspended the IPRs pending potential Supreme Court action in Arthrex I. During that suspension, Polaris and NVIDIA settled and filed joint motions to terminate the proceedings. While those motions were pending, the Supreme Court issued Arthrex II and vacated the Federal Circuit’s vacatur of the Board’s final written decisions, thus reinstating those decisions.
The Board then issued an order finding that termination of the IPRs was not appropriate because, due to the Supreme Court’s decision in Arthrex II, the final written decisions were not vacated.
The appeals by Polaris then resumed, and the Federal Circuit accepted further briefing on the Board’s refusal to terminate the IPRs. Polaris argued that the motions to terminate were timely filed and should have been granted. The Federal Circuit, however, held that the motions were untimely because they were filed after the Board had already decided the merits. And even though the Federal Circuit had vacated the Board’s final written decisions at the time the motions were filed, those decisions were reinstated by the Supreme Court’s ruling in Arthrex II.
The Federal Circuit also rejected Polaris’s remaining arguments regarding the substance of the Board’s decisions, including claim construction issues.