How Do I Invalidate Thee, Let Me Count The Ways

It is a defense to a claim of patent infringement that the patent-in-suit is invalid. For this reason, defendants are constantly exercising their imaginations in the search for new grounds for holding a patent invalid. Recently, one such defendant succeeded in killing a patent on the grounds that it was based upon an application which had been filed one day too late and then revived. The defendant (Aristocrat v. IGT) argued that revival was only allowed in cases of “unavoidable” delay, while the applicant could only show its delay was “unintentional” – a lower standard. The trial court agreed with the defendant, overturning the decision of the Patent Office (which had granted the revival), and killed the patent.

The patent owner-plaintiff appealed to the CAFC (the patent appeals court) which reversed, holding that “improper revival” is not a “cognizable defense” and was not justified in equity.

The defendant has now requested rehearing before the entire panel of the court (a “rehearing en banc”). The issue to be determined is which violations of the Patent Act would be sufficient to render a patent invalid during litigation.

Both sides of the eternal struggle – lowlife infringers versus virtuous patentees – are awaiting the decision of the court. Will the present decision of the CAFC be upheld or will a new plague be visited upon the houses of the patentees?