WASHINGTON, D.C. (September 23, 2008) — A unanimous panel of the U.S. Court of Appeals for the Federal Circuit ruled in favor of McDermott Will & Emery clients Aristocrat Technologies Australia Pty Limited and Aristocrat Technologies, Inc. (Aristocrat) in an appeal against International Game Technology and IGT. In an opinion authored by Judge Linn, the federal circuit reversed the district court's grant of summary judgment of invalidity against Aristocrat. The trial court decision was based on the "improper revival" of an unintentionally abandoned patent application before the U.S. Patent and Trademark Office. The federal circuit agreed with Aristocrat that "improper revival" is not "a cognizable defense in an action involving the validity or infringement of a patent." The panel reasoned that "improper revival" did not fit into any of the four categories of defenses available in an infringement action enumerated by Section 282 of Title 35.
The federal circuit's decision has important ramifications for patent owners, shielding patentees from invalidity attacks based on prosecution irregularities. As many as 73,000 patent applications and resulting patents could have been affected by the asserted "improper revival" defense. The federal circuit rejected that attack, remarking, "[o]nce a patent has issued, the procedural minutiae of prosecution have little relevance to the metes and bounds of the patentee's right to exclude." The court noted that a contrary decision could result in a "deluge" of arguments by accused infringers "relating to every minor transgression they could comb from the file wrapper." That "deluge", the panel explained, "would only detract focus from the important legal issues to be resolved—primarily, infringement and validity."
Terrence P. McMahon, head of McDermott's global Intellectual Property, Media & Technology Department and lead trial counsel in the case commented that, "The McDermott team did an exceptional job in defending these patents. The briefs and the argument plainly pointed out the fallacy of IGT's positions and the risk of creating a defense based upon prosecution minutiae. This is an important result for all intellectual property owners and clearly demonstrates that patents are alive and well."
Washington, D.C. partner Ray Lupo argued the appeal on behalf of Aristocrat. The briefs were authored by Anthony de Alcuaz and Natalia Blinkova.
McDermott's Intellectual Property, Media & Technology Department has one of the largest concentrations of patent, trademark and copyright prosecution, licensing and litigation services worldwide. The Firm's Intellectual Property Department is recognized for its trial, International Trade Commission and appellate experience and clients describe the Firm as "one of the most complete IP groups around…[with] the firepower to handle the most complex IP issues" (Chambers USA). The National Law Journal selected McDermott for its 2008 Appellate Hot List. The Firm was one of 20 law firms recognized on the 2008 Appellate Hot List.