Claim At Issue Must Be Substantively Allowable To Qualify For PTA – Patent

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The US Court of Appeals for the Federal Circuit upheld two district court decisions, finding that a patentee who only partially prevailed in one of two appeals was not entitled to additional patent term adjustments (PTAs) from the US Patent & Trademark Office (PTO). ) pursuant to 35 USC § 154(b)(1)(C) during the pendency of their district court complaints. SawStop Holding LLC v. VidalCase #2021-1537 (Federal Circ. Sept. 14, 2022) (Newman, Linand Chen, JJ.)

SawStop has two patents directed to saws with a safety feature that stops a chainsaw blade upon contact with meat. During the prosecution of the application for one of the patents, SawStop appealed a denial of obviousness to the Patent Trial & Appeal Board (Board). The board upheld the obviousness rejection, but for new reasons. The patent, eventually granted after SawStop, amended the disputed claim to overcome the obviousness denial.

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Similarly, during the prosecution of the application for the second patent, independent claim 1 was rejected as anticipated and rejected for obviousness-type double patenting, while dependent claim 2 was rejected as anticipated. SawStop appealed the denials. The board upheld both dismissals of claim 1, but overturned the dismissal of claim 2. SawStop then challenged the Board’s anticipated dismissal of Claim 1 in the United States District Court for the District of Columbia, which reversed the anticipated dismissal. SawStop has not challenged the obviousness-type dual patenting rejection. On remand to the Chamber, SawStop overturned Claim 1 and rewrote Claim 2 as an independent claim. A later granted patent.

Because the grant of both patents was delayed by pre-licensure oppositions, SawStop requested PTAs under Section 154(b)(1)(C):

Subject to the limitations of paragraph (2), if the grant of an original patent is delayed due to … (iii) appeal review by the Patent Trial and Appeal Board or by a federal court in a case in which the patent was granted following a decision in of the review overturning a negative finding of patentability, the term of the patent is extended by 1 day for each day of pendency of the proceeding, order or review, as the case may be.

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The board granted PTA “for the delay incurred in successfully setting aside the refusal of claim 2” of the second patent, but denied additional PTA for both patents arising from the appeals. SawStop filed lawsuits in the US District Court for the Eastern District of Virginia to challenge the board’s decision. The court ruled on summary judgment in favor of the PTO in both actions. SawStop then appealed to the Federal Circuit.

The Federal Circuit affirmed this, finding that SawStop interpreted Section 154(b)(1)(C) too broadly. SawStop argued in part that any rejection by the examiner overturned on appeal qualifies as “overturning a determination of patentability.” The court rejected this argument, stating that the board’s negative finding of patentability stood before and after the appeal to the board. That is, “overturning a ‘finding of patentability’ requires a finding that the claim in question is substantively allowable, and not merely free of a particular refusal.” Since the appeals to the patentability finding of the claims at issue have not been reversed, the court found that the Board was correct in refusing the PTA in respect of both patents.

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