Patent Term Adjustment Under 35 U.S.C. 154(b)(1)(C)(iii) Requires Reversal of Adverse Determination of Patentability

| Ashley C. MoralesJustin J. Gillett


Before Newman, Linn, and Chen. Appeal from the United States District Court for the Eastern District of Virginia

Summary: When a patent claim is subject to adverse determinations of patentability first before the PTO and again after appeal, the claim is not entitled to patent term adjustment for the period of the appeal even if the claim eventually issues after post-appeal prosecution and amendment.

SawStop filed two patent applications with the PTO. After the Examiner rejected claims from both applications, SawStop appealed the rejections to the Patent Trial and Appeal Board. For the first patent application, the Board held that the Examiner did not make initial fact findings required to demonstrate a prima facie case of obviousness, but ultimately affirmed rejection of the relevant claim on a new ground. For the second patent application, the Board affirmed rejection of the relevant claim on grounds of anticipation and double patenting.

SawStop appealed to the District Court, challenging rejection of the second patent application based on anticipation. SawStop did not address rejection of the first patent application or the double patenting rejection of the second patent application. The District Court reversed the challenged anticipation rejection. Claims from both patents were further amended and eventually issued.

SawStop requested a patent term adjustment for each patent under 35 U.S.C. 154(b)(1)(C)(iii). The PTO denied the request for one claim of each patent. SawStop appealed those denials in District Court. After cross-motions for summary judgement, the District Court found that neither patent claim was entitled to patent term adjustment, reasoning that neither application issued after an adverse determination of patentability was reversed. SawStop appealed the District Court’s ruling.

The Federal Circuit affirmed. It held the portion of the patent term adjustment statute at issue, 35 U.S.C. 154(b)(1)(C)(iii), requires that the patent issue under a decision reversing an adverse determination of patentability. The Federal Circuit held that there was no such reversal for either patent. With regards to the first patent, the claims were held unpatentable both before and after review by the Board, even though the Board’s reasoning for unpatentability differed from the Examiner’s. With regards to the second patent, the claims were still unpatentable even after review by the District Court because that review did not address the PTO’s double-patenting rejection.

Editor: Paul Stewart