SawStop Holding, LLC vs. USPTO
Docket No. 2021-1537, -2105 (https://cafc.uscourts.gov/opinions-orders/21-1537.OPINION.9-14-2022_2003622.pdf)
NEWMAN, LINN, CHEN
September 14, 2022
Brief Summary: DC and USPTO decision not to grant patent term adjustments to SawStop’s patents affirmed (type C delay extensions).
Summary: SawStop appealed DC grant of summary judgment (SJ) to the USPTO for denying SawStop any prosecution-related patent term adjustment (PTA) under the American Inventors Protection Act of 1999 to the term of US 9.552,476 and 9,927,796. There PTA is based on three categories of prosecution delays: (A) when the PTO fails in certain specified ways to timely respond to the applicant; (B) when the PTO fails to issue a patent within a certain time from filing; and, (C) an extension of one day for each day the issue of an original patent 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. The type C delay is at issue in this appeal, specifically the meaning of “issued under a decision in the review” and “reversing an adverse determination of patentability”. The DC denied SawStop’s motion, finding “the ’476 patent application was not ‘issued under a decision in the review reversing an adverse determination of patentability,’ and thus was not eligible for PTA under § 154(b)(1)(C)(iii).” The DC also “held that the ’796 patent was not entitled to PTA for Sawstop’s appeal to the District Court for the District of Columbia because the appeal did not ‘revers[e] an adverse determination of patentability’ as required by 35 U.S.C. § 154(b)(1)(C)(iii), as claim 1 remained subject to the outstanding provisional double patenting rejection and was thus unpatentable both before and after the appeal.” The FC panel wrote that “Type C adjustments are for delays that are…due to…successful appeals” (Supernus, FC 2019), of which “unambiguous language 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.” And that did not apply here because, e.g., for the ‘476 patent, “the Board in the same review found claim 11 unpatentable, albeit for a different reason” (Mayo, FC 2019) and the DC’s decision that “the claim as issued was not the same as the claim ‘under a decision in the review’” (e.g., “the claim was subject to a year of additional substantive prosecution and amendments to address the Board’s new ground of rejection”) was correct. The FC panel similarly found the DC’s decision regarding the ‘796 patent decision was correct as “the singular reversal referenced in the statute is the determination of patentability of the claim under appellate review, not a basis for a rejection or number of rejections” (“the plain meaning of the statute”, and, e.g., “[t]he act giving rise to (A) delay is the PTO’s failure to act after an appellate decision “in a case in which allowable claims remain in the application”, “a wholly different context than that of the (C) delay provision”; and “[t]he ’796 patent, as issued, did not include claim 1 as appealed”). The DC and USPTO decisions were therefore affirmed.