United States Court of Appeals for the Federal Circuit 

2008-1016 

ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LIMITED 

and ARISTOCRAT TECHNOLOGIES, INC., 

Plaintiffs-Appellants, 

v. 

INTERNATIONAL GAME TECHNOLOGY and IGT, 

Defendants-Appellees. 

 Raphael V. Lupo, McDermott Will & Emery LLP, of Washington, DC, argued for 

plaintiffs-appellants. On the brief were Brian E. Ferguson, Natalia V. Blinkova, and Leonard 

D. Conapinski, of Chicago, Illinois; and Terrence P. McMahon, Anthony De Alcuaz, and 

Robert J. Blanch, Jr., of Palo Alto, California. 

 Jeffrey W. Sarles, Mayer Brown LLP, of Chicago, Illinois, for defendants-appellees. 

With him on the brief were Brent A. Batzer, and Sarah E. Rauh. Of ounsel on the brief were 

Jeffrey S. Love and Garth A. Winn, Klarquist Sparkman, LLP, of Portland, Oregon. Of 

counsel was Andrea C. Hutchinson, Mayer Brown LLP, of Chicago, Illinois. 

 Mary L. Kelly, Associate Solicitor, United States Patent and Trademark Office of 

Arlington, Virginia, for amicus curiae Director of the Patent and Trademark Office. With her 

on the brief were James A. Toupin, General Counsel, Stephen Walsh, Acting Solicitor, and 

Joseph H. Piccolo, Associate Solicitor. Also on the brief was Anthony J. Steinmeyer, 

Attorney, Commercial Litigation Branch, Civil Division, United States Department of Justice, 

of Washington, DC. 

 Seth M. Galanter, Morrison & Foerster LLP, of Washington, DC, for amicus curiae 

Neurotechnology Industry Organization. With him on the brief was Priya B. Viswanath. 

Appealed from: United States District Court for the Northern District of California 

Judge Martin J. Jenkins 
 

United States Court of Appeals for the Federal Circuit 

2008-1016 

ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LIMITED and ARISTOCRAT 

TECHNOLOGIES, INC., 

 Plaintiffs-Appellants, 

v. 

INTERNATIONAL GAME TECHNOLOGY and IGT, 

 Defendants-Appellees, 

Appeal from the United States District Court for the Northern District of California in 

case no. 06-CV-3717, Judge Martin Jenkins. 

 __________________________ 

DECIDED: September 22, 2008 

 __________________________ 

Before NEWMAN, BRYSON, and LINN, Circuit Judges. 

LINN, Circuit Judge. 

 The district court concluded that the U.S. Patent and Trademark Office 

“improperly revived” U.S. Patent No. 7,056,215 after it was abandoned during 

prosecution, and therefore held it (and the continuation patent that followed it) invalid on 

summary judgment. We conclude that “improper revival” is not a cognizable defense in 

an action involving the validity or infringement of a patent. Thus, we reverse the district 

court’s grant of summary judgment and remand for proceedings consistent with this 

opinion. 
 

I. BACKGROUND 

 Aristocrat Technologies Australia Pty, Ltd. and Aristocrat Technologies, Inc. 

(collectively, “Aristocrat”) compete with International Game Technology and IGT 

(collectively, “IGT”) in the market for electronic gaming machines. Aristocrat is the 

assignee of U.S. Patent Nos. 7,056,215 (“the ’215 patent”) and 7,108,603 (“the ’603 

patent”), both of which relate to a “slot machine game and system with improved jackpot 

feature.” Prosecution of these patents began in Australia, when, starting on July 8, 

1997, Aristocrat filed two provisional patent applications directed to the inventions 

embodied in the patents-in-suit. One year later, Aristocrat filed a Patent Cooperation 

Treaty application (“the PCT application”) in Australia, claiming priority to the previously 

filed provisional applications. The PCT application was subsequently published. 

Pursuant to 35 U.S.C. § 371 and 37 C.F.R. § 1.495, Aristocrat was required to pay the 

fee for the U.S. national stage of the PCT application by January 10, 2000—thirty 

months after the filing date of the first Australian provisional application. 

 The U.S. Patent and Trademark Office (“PTO”) did not receive Aristocrat’s 

national filing fee until January 11, 2000—one day late. The PTO consequently mailed 

a notice of abandonment to Aristocrat, which stated, among other things, that Aristocrat 

“may wish to consider filing a petition to the Commissioner under 37 CFR 1.137(a) or 

(b) requesting that the application be revived.” J.A. at 642. In lieu of filing a petition to 

revive the abandoned application, Aristocrat responded by filing a Petition to Correct the 

Date-In—that is, to correct the date on which the PTO received its national filing fee. 

The PTO denied the petition without prejudice, after Aristocrat failed to provide sufficient 

evidence to corroborate the date the filing fee was mailed. It is unclear when Aristocrat 

2008-1016 2 
 

received the PTO’s denial,1 but it later filed a petition to revive the ’215 patent 

application under 37 C.F.R. § 1.137(b), claiming that the delay in paying the national 

stage filing fee was “unintentional.” Id. at 660-61. The PTO granted the petition to 

revive on September 3, 2002, after concluding that “[a]ll of the requirements of 37 CFR 

1.137(b) ha[d] been met.” Id. at 687. Following the PTO’s revival, Aristocrat resumed 

prosecution of the ’215 patent application, and later filed the ’603 patent application as a 

continuation of the ’215 patent application. The ’215 patent issued on June 6, 2006, 

and the ’603 patent issued on September 19, 2006. 

 In June 2006, Aristocrat filed suit against IGT for infringement of the ’215 patent 

in the United States District Court for the Northern District of California. Aristocrat 

amended its complaint to assert infringement of the ’603 patent when that patent 

issued. IGT answered and subsequently moved for summary judgment of invalidity. It 

argued that the ’215 patent was invalid because, after it was abandoned, Aristocrat was 

required to show that its delay was “unavoidable” in order to revive the application, not 

merely that its delay was “unintentional.” Thus, according to IGT, the PTO “improperly 

revived” the ’215 patent application by requiring Aristocrat only to show “unintentional 

delay.” IGT also argued that the ’603 patent was invalid, contending that since the ’215 

patent application was not lawfully revived, it constituted prior art to, and thus 

anticipated, the ’603 patent under 35 U.S.C. § 102(b). 

 The district court granted IGT’s motion. It first concluded that the Patent Act 

permitted revival of an abandoned patent application only upon a showing of 

 

1

 The parties dispute when Aristocrat received notice of the denial. 

Because this dispute is unimportant to our analysis, we do not discuss it further here. 

2008-1016 3 
 

“unavoidable delay.” Aristocrat Techs. Austl. Pty, Ltd. v. Int’l Game Tech., 491 F. Supp. 

2d 916, 924-29 (N.D. Cal. 2008). Next, the district court found that IGT was permitted, 

pursuant to 35 U.S.C. § 282, to raise the PTO’s alleged improper revival as a defense to 

infringement. Id. at 929-31. The district court also concluded, alternatively, that it 

possessed authority to review the PTO’s revival of the ’215 patent application under the 

Administrative Procedure Act, 5 U.S.C. § 701 et seq. (“APA”). Id. at 931-32. After 

concluding that Aristocrat abandoned the ’215 patent application and failed to meet the 

more exacting “unavoidable delay” standard when attempting to revive it, the district 

court deemed the ’215 patent invalid. Id. at 932-35. Finally, the district court also 

deemed the ’603 patent invalid, under the rationale that if the ’215 patent application 

was not properly revived, then it constituted invalidating prior art under 35 U.S.C. § 

102(b). Id. at 935-36. Following its grant of summary judgment, the district court 

entered final judgment in favor of IGT. Aristocrat Techs. Austl. Pty, Ltd. v. Int’l Game 

Tech., No. 06-CV-3717 (N.D. Cal. Sept. 4, 2007). 

 Aristocrat timely appealed. We have jurisdiction pursuant to 28 U.S.C. 

§ 1295(a)(1). 

II. DISCUSSION 

A. Standard of Review 

 Statutory interpretation is a question of law, which we review de novo. Imazio 

Nursery, Inc. v. Dania Greenhouses, 69 F.3d 1560, 1564 (Fed. Cir. 1995). We also 

review a grant of summary judgment de novo, reapplying the standard that the district 

court employed. Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1301 (Fed. Cir. 

1999). Drawing all reasonable inferences in favor of the nonmovant, “[s]ummary 

2008-1016 4 
 

judgment is appropriate only when ‘there is no genuine issue as to any material fact and 

. . . the moving party is entitled to a judgment as a matter of law.’” Id. (quoting Fed. R. 

Civ. P. 56(c)). 

B. Analysis

1. The ’215 Patent

 The threshold issue in this appeal is whether “improper revival” may be raised as 

an invalidity defense in an action involving the infringement or validity of a patent. The 

district court, relying on 35 U.S.C. §§ 282(2) and (4), decided that question affirmatively. 

The district court also found that the APA provided a separate basis upon which to 

review the PTO’s revival of the ’215 patent. We conclude that “improper revival” may 

not be raised as a defense in an action involving the validity or infringement of a 

pa .2 

 Section 282 of title 35 provides a catalog of defenses available in an action 

tent

involvi

(1) Noninfringement, absence of liability for infringement or 

(2) Invalidity of the patent or any claim in suit on any ground specified 

(3) Invalidity of the patent or any claim in suit for failure to comply with 

 

ng the validity or infringement of a patent: 

unenforceability, 

in part II of this title as a condition for patentability, 

any requirement of sections 112 or 251 of this title, 

(4) Any other fact or act made a defense by this title. 

2

 Because it is on this basis that we decide the appeal, we do not reach the 

parties’ alternative arguments, including those relating to whether the Patent Act permits 

revival for “unintentional”—as opposed to “unavoidable”—delay. 

2008-1016 5 
 

The first and third enumerated categories are not asserted by IGT as bases for its 

invalidity defense. At issue are the second and fourth. We discuss each in turn. 

 Section 282(2) authorizes an invalidity defense based “on any ground specified 

in part II of this title as a condition for patentability.” A defense falling under this section 

thus has two prerequisites: it must fall within part II of title 35 and it must be a “condition 

for patentability.” The district court determined that “[b]ecause Section 133’s six-month 

deadline for prosecuting an application is specified within part II of Title 35, it 

necessarily provides an available defense where a patentee has abandoned, and failed 

to lawfully revive, a patent application.” Aristocrat, 491 F. Supp. 2d at 930. What the 

district court failed to address, however, is whether the proper revival of an abandoned 

application is a “condition for patentability.” 

 It has long been understood that the Patent Act sets out the conditions for 

patentability in three sections: sections 101, 102, and 103. See Graham v. John Deere, 

383 U.S. 1, 12 (1966) (“The [1952 Patent] Act sets out the conditions of patentability in 

three sections. An analysis of the structure of these three sections indicates that 

patentability is dependent upon three explicit conditions: novelty and utility as articulated 

and defined in § 101 and § 102, and nonobviousness, the new statutory formulation, as 

set out in § 103.”). These conditions are included in Chapter 10 of the Patent Act, 

entitled “Patentability of Inventions,” and the titles of the sections themselves make 

clear that they relate to fundamental preconditions for obtaining a patent. Section 101, 

relating to utility and patent eligibility,3

 is entitled “Inventions Patentable.” Likewise, 

 

3

 Although the Supreme Court in Graham referred only to the utility 

requirement aspect of section 101, as we often do, it is beyond question that section 

2008-1016 6 
 

sections 102 and 103, relating to novelty and nonobviousness, respectively, are 

explicitly entitled “[c]onditions for patentability.” 

 While there are most certainly other factors that bear on the validity or the 

enforceability of a patent, utility and eligibility, novelty, and nonobviousness are the only 

so-called conditions for patentability. For example, section 112 unquestionably provides 

certain additional requirements for a patent to be valid, one of which, for instance, is that 

the patented invention be enabled by the specification. 35 U.S.C. § 112, ¶ 1. But the 

requirements in section 112 are not conditions for patentability; they are merely 

requirements for obtaining a valid patent. Indeed, section 282 itself draws a distinction 

between invalidity based “on any ground specified in part II of this title as a condition for 

patentability,” 35 U.S.C. § 282(2), and invalidity “for failure to comply with any 

requirement of sections 112 or 251,” 35 U.S.C. § 282(3). See Sextant Avionique, S.A. 

v. Analog Devices, Inc., 172 F.3d 817, 829 (Fed. Cir. 1999). Section 282(3), relating to 

invalidity under section 112, would be redundant if the requirements in section 112 were 

conditions for patentability because, if so, that defense would fall within the boundaries 

of section 282(2). Section 282(2), by virtue of its applicability to “condition[s] for 

patentability,” relates only to defenses of invalidity for lack of utility and eligibility, 

novelty, and nonobviousness, and does not encompass a defense based upon the 

alleged improper revival of a patent application. 

 The district court also found that improper revival was an available defense under 

section 282(4), the catch-all provision of section 282, which provides a defense for 

 

101’s other requirement, that the invention be directed to patentable subject matter, is 

also a condition for patentability. 

2008-1016 7 
 

“[a]ny other fact or act made a defense by” title 35. After reciting this statutory 

language, the district court concluded, “A fortiori, Section 282(4) must therefore 

incorporate Section 133 and 371(d).” Aristocrat, 491 F. Supp. 2d at 929-30. The error 

in the district court’s analysis, however, is that it pretermits the fundamental requirement 

of the subsection—namely, that the act or fact is “made” a defense by the title. This is 

not a trivial detail—if omitted, any provision in title 35 would provide a defense under 

section 282(4), and there would thus be no reason for the inclusion of sections 282(1) 

through (3). If, as IGT suggests, Congress truly intended to permit any provision of title 

35 to constitute a defense in an action involving the validity or infringement of a patent, 

it could have simply said, in one paragraph rather than four, that a defense lies in “any 

section of this title.” Consistent with our obligation to give meaning to all of the words in 

the statute, see Duncan v. Walker, 533 U.S. 167, 174 (2001) (“It is our duty to give 

effect, if possible, to every clause and word of a statute. We are thus reluctant to treat 

statutory terms as surplusage in any setting.” (internal quotation marks and citations 

omitted)), we decline to read the statute in this manner and therefore require that the 

asserted defense actually be “made a defense.” 

 The salient question, then, is whether improper revival is “made a defense” by 

title 35. We think that it is not. Congress made it clear in various provisions of the 

statute when it intended to create a defense of invalidity or noninfringement, but 

indicated no such intention in the statutes pertaining to revival of abandoned 

applications. For example, 35 U.S.C. § 273 is entitled “Defense to infringement based 

on earliest inventor” and expressly provides that the provision “shall be a defense to an 

action for infringement.” Similarly, 35 U.S.C. § 185 states that a patent issued to a 

2008-1016 8 
 

person who has violated the secrecy provisions of section 184 “shall be invalid,” except 

under certain circumstances. Section 272 of title 35 provides that the temporary 

presence of a patented invention in the United States, if used exclusively for the needs 

of a vessel, aircraft, or vehicle, “shall not constitute infringement.” The list goes on. 

What is important to note is simply that sections 133 and 371, relied upon by IGT, 

provide none of the signals that Congress has given in other circumstances to indicate 

that these sections provide a defense to an accused infringer. Rather, these provisions 

merely spell out under what circumstances a patent application is deemed abandoned 

during prosecution and under what circumstances it may be revived. See 35 U.S.C. § 

133 (“Upon failure of the applicant to prosecute the application within six months . . ., 

the application shall be regarded as abandoned . . . .”); id. § 371 (“Failure to comply with 

these requirements shall be regarded as abandonment of the application . . . .”). 

Because the proper revival of an abandoned application is neither a fact or act made a 

defense by title 35 nor a ground specified in part II of title 35 as a condition for 

patentability, we hold that improper revival may not be asserted as a defense in an 

action involving the validity or infringement of a patent. 

 Our conclusion that improper revival is not a defense comports with the approach 

we took in Magnivision, Inc. v. Bonneau Co., 115 F.3d 956 (Fed. Cir. 1997), which we 

continue to believe is a sound one. In that case, we concluded that “[p]rocedural lapses 

during examination, should they occur, do not provide grounds of invalidity. Absent 

proof of inequitable conduct, the examiner’s or the applicant’s absolute compliance with 

the internal rules of patent examination becomes irrelevant after the patent has issued.” 

Id. at 960; see also id. (“Imperfection in patent examination, whether by the examiner or 

2008-1016 9 
 

the applicant, does not create a new defense called ‘prosecution irregularities’ and does 

not displace the experience-based criteria of Kingsdown[ Medical Consultants, Ltd. v. 

Hollister, Inc., 863 F.2d 867 (Fed. Cir. 1988)].”). There is good reason not to permit 

procedural irregularities4

 during prosecution, such as the one at issue here, to provide a 

basis for invalidity. Once a patent has issued, the procedural minutiae of prosecution 

have little relevance to the metes and bounds of the patentee’s right to exclude. If any 

prosecution irregularity or procedural lapse, however minor, became grist for a later 

assertion of invalidity, accused infringers would inundate the courts with arguments 

relating to every minor transgression they could comb from the file wrapper. This 

deluge would only detract focus from the important legal issues to be resolved—

primarily, infringement and invalidity. We wish to stress, however, as we did in 

Magnivision, that where the procedural irregularity involves an “affirmative 

misrepresentation of a material fact, failure to disclose material information, or 

submission of false material information, coupled with an intent to deceive,” it may rise 

to the level of inequitable conduct, and is redressible under that framework. See

Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1378 (Fed. Cir. 2008) (citations 

omitted); cf. Ferguson Beauregard/Logic Controls v. Mega Sys., LLC, 350 F.3d 1327, 

1343-44 (Fed. Cir. 2003) (holding that accused infringer did not state valid claim for 

 

4

 We take this opportunity to point out that “prosecution irregularities” is 

distinct from “prosecution laches.” Prosecution laches stems not from any procedural 

lapse or irregularity during prosecution, but rather from an abuse of statutory provisions 

that results, as a matter of equity, in “an unreasonable and unexplained delay in 

prosecution.” Symbol Techs., Inc. v. Lemelson Med., Educ. & Research Found., 422 

F.3d 1378, 1385 (Fed. Cir. 2005). Moreover, the legislative history of 35 U.S.C. § 282 

suggests that it was intended to incorporate preexisting equitable defenses, including 

prosecution laches. Symbol Techs., Inc. v. Lemelson Med., Educ. & Research Found., 

277 F.3d 1361, 1366 (Fed. Cir. 2002). 

2008-1016 10 
 

relief for “improper revival” following non-payment of maintenance fee where it failed to 

plead inequitable conduct). 

 We acknowledge that section 282 is not the only source of defenses in the 

Patent Act. See Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1584 (Fed. Cir. 1995) 

(“Section 282 does not state that the list of invalidity defenses contained therein are the 

only ones available; the statute merely says ‘[t]he following shall be defenses.’ The 

express words of section 282 therefore allow for the existence of other invalidity 

defenses.”). To be sure, we have held, on occasion, that a provision of the Patent Act 

not falling within the literal scope of section 282 may nevertheless provide a defense of 

noninfringement or invalidity. In Quantum, for example, we held that a patentee who 

improperly enlarged the scope of its claims during reexamination, in violation of 35 

U.S.C. § 305, subjected itself to a defense of invalidity, because any other result would 

“render[] the prohibition [against broadening claims] in section 305 meaningless.” Id. 

We ex

 broaden their claims during reexamination, 

and, if successful, be able to enforce these broadened claims against their 

improperly broadened claims will be 

held invalid will discourage applicants from attempting to broaden their 

plained: 

If the only penalty for violating section 305 is a remand to the PTO to have 

the reexamined claims narrowed to be commensurate in scope with what 

the applicant was only entitled to in the first place, then applicants will 

have an incentive to attempt to

competitors. . . . The likelihood that 

claims during reexamination. 

Id. (internal citations omitted).5 

 

5

 We also point out that since section 282(3) provides an invalidity defense 

for failure to comply with section 251, which in turn prohibits the broadening of claims in 

reissue applications after two years, 35 U.S.C. § 251 ¶ 4, the result in Quantum mirrors 

the statutory framework set out for the analogous reissue context. Cf. Quantum, 65 

F.3d at 1583. 

2008-1016 11 
 

 The analysis and result in Quantum are inapposite to this appeal. Even if we 

assume that the Patent Act permits revival of an application only upon a showing of 

unavoidable delay, a question that we expressly decline to reach in this appeal, none of 

the considerations that led us to the rule enunciated in Quantum compels a similar 

result here. A primary concern in Quantum was that failure to impose invalidity for 

violation of the statute would encourage noncompliance. That concern is simply not 

present here, as we discern no legitimate incentive for a patent applicant to intentionally 

abandon its application, much less to attempt to persuade the PTO to improperly revive 

it. Because patents filed after enactment of the Uruguay Round Agreements Act, like 

the patents at issue here, generally have a term that runs twenty years from the filing 

date (instead of seventeen years from issue), cf. Merck & Co. v. Hi-Tech Pharmacal 

Co., 482 F.3d 1317, 1319 (Fed. Cir. 2007), abandoning the application would only serve 

to shorten the applicant’s right to exclude. 

 We have considered IGT's arguments attempting to bolster the district court's 

decision under the APA, but find them unpersuasive. Under the circumstances of this 

case, the APA provides no relief to IGT. 

2. The ’603 Patent

 The district court’s conclusion with respect to the ’215 patent ordained the fate of 

the ’603 patent. Once it was determined that the ’215 patent application was improperly 

revived, the ’603 patent application, which was filed as a continuation application of the 

’215 patent application, was no longer able to claim priority to that application’s effective 

filing date. As a result, the ’215 patent application became prior art to the ’603 patent. 

On this basis, the district court granted summary judgment that “the ’603 Patent is 

2008-1016 12 
 

2008-1016 13 

necessarily invalid [under 35 U.S.C. § 102(b)] because it was described in the published 

’215 PCT Application more than one year prior to its date of application.” Aristocrat, 491 

F. Supp. 2d at 936. Aristocrat argues that if the ’215 patent application was properly 

revived, then the ’603 patent retains priority to the ’215 patent application’s effective 

filing date, and therefore the ’215 patent application is not prior art to the ’603 patent. 

Thus, Aristocrat contends that if we reverse the district court’s grant of summary 

judgment on the ’215 patent, the district court’s grant of summary judgment with respect 

to the ’603 patent must also be reversed. IGT concedes the point, Appellees’ Br. at 60 

(“[I]t is undisputed that the validity of the ’603 patent rests on the validity of the ’215 

patent . . . .”), and we agree. Because we have concluded that “improper revival” is not 

a cognizable defense and have re ourt’s summary judgment in that 

III. CONCLUSION 

 For the reasons discussed above, we reverse the district court’s grant of 

summary judgment and remand for proceedings consistent with this opinion. 

versed the district c

regard, we also reverse the district court’s grant of summary judgment of anticipation 

with regard to the ’603 patent.