Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to . . .
    (iii) appellate review by the Patent Trial and Appeal Board 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 term of the patent shall be extended 1 day for each day of the pendency of the proceeding, order, or review, as the case may be.

(The meanings of the two numbered and italicized were at issue in the consolidated appeal.)

The issuance of the '476 and '796 patents, which are directed to power saws having a safety feature that stops the saw blade upon contact with flesh, was delayed by appeals to the Patent Trial and Appeal Board before allowance.  With regard to the '476 patent application, claim 11 was finally rejected by the Examiner as being obvious, and SawStop appealed the rejection to the Board.  The Board concluded that the Examiner failed to make the initial factual findings required to demonstrate a prima facie case of obviousness of claim 11, but nevertheless affirmed, finding the claim to be obvious based on a new ground of rejection.  On remand, SawStop reopened prosecution, filed several amendments and a Request for Continued Examination, and eventually secured an allowance of claim 11.  The USPTO did not award any PTA for the time on appeal, SawStop sought reconsideration of the Office's determination, the Office denied that request, and SawStop filed a complaint in the Eastern District of Virginia to challenge the Office's determination.  The District Court granted summary judgment to the USPTO, finding that because claim 11 was subject to a new ground of rejection on appeal, the '476 patent was not "issued under a decision in the review reversing an adverse determination of patentability," and therefore was not eligible for PTA under § 154(b)(1)(C)(iii).

With regard to the '796 patent, claim 1 was finally rejected by the Examiner for anticipation and provisional non-statutory double patenting, and claim 2 was finally rejected for anticipation.  SawStop appealed the rejections to the Board, which affirmed the rejections of claim 1 and reversed the rejection of claim 2, and SawStop appealed the anticipation rejection of claim 1 to the District Court for the District of Columbia, which reversed that rejection.  On remand, the Board noted that claim 1 remained rejected for provisional non-statutory double patenting, and rather than filing a terminal disclaimer or rewriting claim 2 as an independent claim, SawStop filed an RCE and continued prosecution, filing several amendments to the claims, and eventually secured an allowance.  The USPTO again did not award any PTA for the time on appeal and SawStop filed a complaint in the Eastern District of Virginia to challenge the Office's determination.  The District Court granted summary judgment to the USPTO, finding that because claim 1 remained subject to the outstanding provisional double patenting rejection and was thus unpatentable both before and after appeal to the District Court, the '796 patent was not entitled to PTA for SawStop's appeal because the appeal did not "revers[e] an adverse determination of patentability" as required by 35 U.S.C. § 154(b)(1)(C)(iii).  The District Court also found that because claim 1 was eventually cancelled and thus did not issue in the patent, the '796 patent did not "issue under" an adverse determination of patentability as that phrase is used in 35 U.S.C. § 154(b)(1)(C)(iii).

SawStop appealed both District Court decisions to the Federal Circuit.  The opinion begins by citing the Federal Circuit's decision in Chudik v. Hirshfeld, 987 F.3d 1033, 1039-40 (Fed. Cir. 2021), for the proposition that:

[T]he most natural meaning of the words "appellate review by the Patent Trial and Appeal Board or by a Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability," when applied to an examiner's unpatentability ruling, requires that "the patent issue under a Board decision that reversed the examiner's unpatentability ruling or under a court decision that reversed a Board unpatentability ruling in the matter."

Citing Supernus Pharms., Inc. v. Iancu, 913 F.3d 1351, 1353 (Fed. Cir. 2019), the Court also notes that "[t]ype C adjustments are for delays that are . . . due to . . . successful appeals."

Regarding the '476 patent, SawStop contended that because the Examiner's rejection of claim 11 was overturned on appeal, even though the Board issued a new ground of rejection, this qualified as "a reversal of a determination of patentability."  The USPTO countered that there was "no reversal of an adverse patentability determination" because claim 11 was unpatentable before and after appeal, and because the Board maintained the unpatentability of claim 11, the '476 patent could not have "issued under" the Board's decision.  The Federal Circuit agreed with the USPTO, finding that:

The adverse determination of unpatentability remained before and after the appeal to the Board.  The appeal thus resulted in no substantive change in the patentability of claim 11.  Such a substantive change is required by the language of the statute itself: the reversal of a "determination of patentability" requires a determination that the claim in question is substantively allowable, not just free of a particular rejection.

Noting that "the claim as issued was not the same as the claim 'under a decision in the review,'" the Court added that "[t]he statutory requirement [that "the patent was issued under a decision in the review"] is not met if the claim that ultimately issues differs substantively from the claim under review."  "Because claim 11 of the '476 patent application was subject to an adverse determination of patentability both before and after the appeal, and because the claim issued only after significant substantive post-appeal prosecution and amendment," the Federal Circuit affirmed the District Court's determination that the '476 patent did not "issue[] under a decision in the review reversing an adverse determination of patentability" as required by § 154(b)(1)(C)(iii).

Regarding the '796 patent, SawStop contended that § 154(b)(1)(C)(iii) only requires "an adverse determination of patentability," and not "that 'all' rejections of a particular claim be reversed."  The Court noted, however, that "the singular reversal referenced in the statute is the determination of patentability of the claim under appellate review, not a basis for a rejection or number of rejections" (emphasis in opinion).  The opinion states that:

The problem with Sawstop's position is that the PTO's "adverse determination of patentability" of claim 1 of the '796 patent was based on two grounds: double patenting and anticipation.  Sawstop only appealed anticipation without addressing the provisional double patenting rejection.  As a result, the District Court for the District of Columbia understandably did not address the double patenting rejection.  Sawstop's success in reversing the anticipation rejection left the provisional double patenting rejection in place.  Claim 1 of the '796 patent was thus unpatentable both before the appeal (because of anticipation and double patenting) and after the appeal (because of double patenting).

SawStop, however, argued that the remaining rejection did not affect "patentability" because it was non-statutory and provisional, adding that the rejection did not have any force or effect until the obviousness-rendering reference issued and was thus not a rejection that it could appeal or the District Court could affirm or reject.  The Federal Circuit disagreed, noting that SawStop had appealed the double patenting rejection to the Board.  The Court also noted that "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," concluding that "[t]he '796 patent therefore did not issue under a decision in the review."  The Federal Circuit therefore affirmed the District Court's determination that the '796 patent also did not "issue[] under a decision in the review reversing an adverse determination of patentability" as required by § 154(b)(1)(C)(iii).

Finding that the USPTO did not err in its interpretations of § 154(b)(1)(C)(iii) and did not violate the APA by refusing to award additional patent term adjustments for (C) delay for the '796 and '476 patents, the Federal Circuit affirmed the District Court's decisions granting summary judgment in favor of the USPTO.

SawStop Holding LLC v. Vidal (Fed. Cir. 2022)
Panel: Circuit Judges Newman, Linn, and Chen
Opinion by Circuit Judge Linn