SawStop Holding LLC appeals the District Court's summary judgment favoring the United States Patent and Trademark Office (PTO) regarding the denial of patent term adjustments (PTAs) for U.S. Patent Nos. 9,522,476 and 9,927,796. The appeal focuses on subsection (C) of 35 U.S.C. § 154(b)(1), which pertains to delays caused by appellate review during patent prosecution. This provision allows for a one-day extension of a patent's term for each day an appellate review delays its issuance. The patents in question relate to power saws equipped with a safety feature that halts the blade upon contact with flesh. SawStop sought PTAs for delays resulting from appeals before the patents were allowed. Specifically, the application for the '476 patent faced a rejection based on obviousness, which SawStop appealed to the Patent Trial and Appeal Board. The court affirmed the PTO's decision, impacting the interpretation of the statute's provisions regarding patent term adjustments.
The Board determined that the examiner failed to provide adequate findings to support a prima facie case of obviousness for claim 11 based on Lokey’s Figures 7–9 and concluded that the examiner's initial analysis was insufficient. However, the Board affirmed the rejection of claim 11 based on a new ground, stating that Lokey Figures 7–9 adequately taught the pivotable component limitation when combined with Fergle. Following this, SawStop reopened prosecution and filed amendments, ultimately leading to the allowance of claim 11 as claim 1 of the ’476 patent, without any adjustment to the patent term for the appeal duration. SawStop's request for redetermination regarding this decision was denied by the PTO, which cited 35 U.S.C. § 154(b)(1)(C)(iii), concluding that the claim did not issue under a reversal of an adverse patentability determination due to ongoing rejection after the Board's decision.
Subsequently, SawStop challenged the PTO's interpretation in the District Court for the Eastern District of Virginia, where both parties filed cross motions for summary judgment. The court ruled in favor of the PTO, affirming that claim 11 was subject to a new ground of rejection and thus ineligible for patent term adjustment (PTA) under the cited statute.
In the case of the ’796 patent, the examiner rejected independent claim 1 for anticipation and non-statutory obviousness-type double patenting, and dependent claim 2 for anticipation. SawStop appealed these rejections, and the Board affirmed the rejection of claim 1 but reversed the anticipation rejection of claim 2, making it patentable. SawStop then filed a complaint in the District Court for the District of Columbia focusing on the anticipation rejection of claim 1, which the court reversed without addressing the double patenting issue. On remand, the Board noted the unresolved double patenting rejection and offered SawStop two options for resolution, from which SawStop opted to rewrite claim 2 as an independent claim. Following this, the Board allowed claim 2 and other dependent claims. Despite filing a request for continued examination (RCE) and making further amendments, the PTO ultimately issued a notice of allowance for the ’796 patent and granted PTA for delays related to the successful reversal of claim 2, but denied additional PTA for the appeal of claim 1.
SawStop challenged the denial of patent term adjustment (PTA) for the ’796 patent in the Eastern District of Virginia, similar to its actions regarding the ’476 patent. The District Court ruled in favor of the Patent and Trademark Office (PTO), concluding that the ’796 patent was not eligible for PTA because SawStop's appeal did not reverse an adverse determination of patentability as required by 35 U.S.C. § 154(b)(1)(C)(iii). The court noted that claim 1 was still subject to a provisional double patenting rejection, rendering it unpatentable both before and after the appeal. Additionally, since claim 1 was ultimately canceled and did not issue in the patent, it did not 'issue under' an adverse determination of patentability, further disqualifying it from PTA. SawStop is appealing the summary judgments, and the jurisdiction for such appeals rests under 28 U.S.C. §§ 1291 and 1295. The appellate court will review the summary judgment grants under the Fourth Circuit’s de novo standard and evaluate the PTO’s PTA award under the Administrative Procedure Act (APA), which allows agency determinations to be overturned only if arbitrary or not in accordance with the law. The court emphasized that no administrative deference was required in this case, as the statutory language of § 154(b)(1)(C)(iii) clearly supports the District Court’s decision. The interpretation of 'appellate review' and 'reversal' was underlined, asserting that for a patent to qualify for PTA, it must be issued as a result of a reversal of an adverse ruling on patentability. The District Court reaffirmed the necessity of two conditions for PTA eligibility: a reversal of adverse patentability and the issuance of a patent from that reversal.
The District Court upheld the PTO's denial of Patent Term Adjustment (PTA) for the ’476 and ’796 patents under 35 U.S.C. § 154(b)(1)(C)(iii), concluding that neither patent met the statutory requirements. SawStop argued that the Board's reversal of an examiner's rejection of claim 11 should qualify as a reversal of an adverse patentability determination, regardless of new grounds for rejection provided by the Board. SawStop contended that the PTO and District Court misinterpreted the statute by imposing an additional requirement that a reversal must not include new rejections. The PTO countered that claim 11 remained unpatentable before and after the Board's review, asserting that the Board's new rationale did not alter the patentability status. The District Court agreed, noting that while the examiner's basis was overturned, the claim was still deemed unpatentable for different reasons, resulting in no substantive change. The statutory language requires a substantive determination of allowance for PTA eligibility, which was not met in this case. The District Court also ruled that claim 11 did not "issue under a decision in the review" because it underwent further substantive prosecution after the appeal. SawStop's argument that the claim would not have issued without the appeal was rejected, affirming that the (C) delay provision does not apply if substantive amendments are made post-appeal.
The interpretation that excludes the phrase "in which the patent was issued under a decision in the review" is unsustainable, as a statute must account for all its provisions to avoid rendering any part inoperative or insignificant. The language "issued under a decision in the review" indicates that at least one claim must have been analyzed by the relevant judicial body, and the statutory requirement is unmet if the issued claim differs substantively from the claim reviewed. Claim 11 of the ’476 patent application, which faced adverse patentability determinations both pre- and post-appeal and was significantly amended after the appeal, does not meet the requirement outlined in 35 U.S.C. § 154(b)(1)(C)(iii).
Regarding claim 1 of the ’796 patent, SawStop argues that the statute requires only a reversal of "an adverse determination of patentability." However, the singular reversal pertains to the determination of patentability itself, not to the number of rejections. SawStop's assertion that the PTO’s interpretation fails to align with the statute's purpose is rejected, as their broader reading overlooks the plain language of the statute. They provide no justification for the claim that (C) delay should compensate for all appellate delays not caused by the applicant. The distinction between (A) and (C) delay provisions is emphasized, where (A) relates to PTO inaction on allowable claims after an appeal, while (C) pertains specifically to the reversal of patentability determinations as the triggering event. The use of "allowable claims" in (A) does not exclude considerability of allowability in (C).
The acts causing (A) delay are distinct from those causing (C) delay and do not influence patentability determinations in appeals. SawStop contends that the Board's reversal of the examiner's anticipation finding for claim 1 constituted a reversal of an adverse patentability determination. However, the PTO's adverse determination was based on both double patenting and anticipation. SawStop only appealed the anticipation rejection, neglecting the double patenting aspect, which led the District Court to not address it. Consequently, the double patenting rejection remained intact, rendering claim 1 unpatentable both before and after the appeal.
SawStop argues that the non-statutory and provisional nature of the double patenting rejection diminished its relevance to patentability. However, SawStop had previously acknowledged the rejection's legal effect by appealing it to the Board and failed to clarify why it could appeal to the Board under 35 U.S.C. § 134 but not to the District Court under § 145. Following remand, claim 1 continued to be subject to the double patenting rejection, which became non-provisional once the related application issued prior to the ’476 patent. To overcome this rejection, SawStop would need to cancel claim 1 or file a terminal disclaimer, actions that did not render the patent allowable post-appeal.
The District Court correctly determined that the appeal did not reverse an adverse patentability determination as per 35 U.S.C. § 154(b)(1)(C)(iii). Additionally, the ’796 patent did not issue under a decision in the review because it excluded claim 1, which had been cancelled in favor of an independent form of claim 2. SawStop's argument that the statute only requires the patent to issue under a review decision does not hold, as the relevant claim in question was cancelled. The District Court's rulings regarding the PTO's interpretations of § 154(b)(1)(C)(iii) and the refusal to grant additional patent term adjustments for (C) delay for the ’796 and ’476 patents are affirmed.
