SAWSTOP HOLDING LLC v. VIDAL

Sawstop appeals the District Court’s denial of its challenge to the PTO’s interpretation of  35 U.S.C. § 154(b)(1)(C)(iii) and the denial of Sawstop’s requests for adjustment to the term of U.S. Patent Nos. 9,522,476 and  9,927,796 (both directed to power saws with a safety feature that instantly stops the saw blade upon contact with flesh) for the time spent on appeal. The CAFC finds no ambiguity in the language of the statute and agrees with the conclusions reached by the District Court that 1) statutory construction of the (C) delay provision imposes two requirements: that an adverse determination of patentability be reversed, and that the application reviewed in that appeal issue as a patent as a result of that reversal and 2) the PTO did not demonstrate clear error in judgment in denying the requested PTA as neither patent met either requirement under the statute.  With respect to the ’476 patent, the CAFC finds that the appeal of the determination of patentability of claim 11 was not “successful” as it was not “reversed” despite the fact that the Board cast aside the examiner’s basis for rejecting claim 11, yet found claim 11 unpatentable, albeit for a different reason. The CAFC also notes that the claim issued only after significant substantive post-appeal prosecution and amendment. With respect to the ’796 patent, the CAFC holds that the District Court was correct that the ’796 patent did not issue under a decision in the review because the ’796 patent, as issued, did not include claim 1 as appealed but rather Sawstop cancelled claim 1 and replaced it with an independent form of claim 2, which had been allowed in dependent form prior to the appeal. The only claim that was subject to the decision under review was claim 1, which was cancelled and thus not part of the issued patent. The ’796 patent therefore did not issue under a decision in the review. Accordingly, the CAFC affirms the judgments of the District Court that the PTO did not err in its interpretations of § 154(b) and did not violate the APA by refusing to award additional patent term adjustments.

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