Federal Circuit Clarifies Applicability of Patent Term Adjustment Based on Appellate Review

In Sawstop Holding LLC v. Vidal, Case Nos. 2021-1537, 2021-2105 (Fed. Cir. Sept. 14, 2022), the Federal Circuit considered appeals that involved whether patent term adjustment (“PTA”) under 35 U.S.C. § 154(b)(1)(C)(iii), denied to a patent owner for two of its patents in lower court proceedings, should have been granted.  Under the above provision, PTA is granted for delays associated with “appellate review by the Patent Trial and Appeal Board (“PTAB”) or by a Federal court in a case in which the patent was [1] issued under a decision in the review [2] reversing an adverse determination of patentability.”  The Federal Circuit agreed with the lower courts and held that the lower courts denial of PTA sought by the patent owner, Sawstop Holding LLC (“Sawstop”), was proper.  In the proceedings for the first of the two patents at issue, Sawstop argued that the PTAB’s reversal of an obviousness rejection made by the Examiner and replacement with a new ground for rejection warranted a grant of PTA for the ultimately issued patent.  In its affirmance of the lower court’s denial of PTA, the Federal Circuit held that neither statutory prong was met because the determination of unpatentability was not reversed by the PTAB and the patent only issued later after several post-appeal amendments, not under a decision in the review. In the proceedings for the second patent, the Federal Circuit agreed with the lower court that although an anticipation rejection of the claim at issue was reversed in an earlier lower court proceeding, an obviousness-type double patenting rejection remained before and after that earlier lower court decision, and because the double patenting rejection remained, it was not error to deny the grant of PTA.  Further, the dispute over the grant of PTA involved a claim that was later cancelled, with the patent issuing based on different claims.  In this way, the patent that ultimately issued did not issue under a decision in the review.