Improper Revival of Patent Could Be Inequitable Conduct
Improper revival of a patent that expired for non-payment of maintenance fees can be raised as inequitable conduct, but not as grounds for invalidity.
In Abstrax, Inc. v. Dell, Inc., No. 2:07-CV-221-DF-CE (E.D. Tex. Oct. 7, 2009) the district court adopted a magistrate’s recommendation and granted Abstrax’s motion for partial summary judgment to block Dell’s affirmative defense that U.S. Patent No. 6, 240,328 was invalid because it was improperly revived after the patent expired for failure to pay maintenance fees. The court cited Aristocrat Technology Australia Pty Ltd. v. International Game Technology, 543 F.3d. 657, 661 (Fed. Cir. 2008) as support for holding that “improper revival” could not be raised as a defense to patent infringement. However, the court also held that Dell could raise the improper revival in the context of inequitable conduct. It appears that improprieties in reinstating or reviving a patent may be raised through a defense of inequitable conduct, which requires detailed pleading under F.R.C.P. 9.), see Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009).
