In our Case of the Week, the Federal Circuit provided what appears to be its first precedential opinion construing Section 317 of the Patent Act—a provision concerning the effect of settlement during an America Invents Act (AIA) proceeding. The Court’s opinion construes the statute in ways that may be unexpected for parties who seek to settle inter partes review (IPR) petitions.
Polaris sued NVIDIA Corporation for infringement of two patents. NVIDIA filed two IPRs, which matured to a final written decision of invalidity. Polaris appealed. The parties then settled, and NVIDIA withdrew from the appeals. The Patent Trial and Appeal Board (PTAB) intervened to defend its decisions in the IPRs.
The Federal Circuit affirmed the district court’s grant of summary judgment in favor of the Patent and Trademark Office (PTO) decision to deny patent term adjustments to SawStop. The decision rests on the interpretation of 35 U.S.C. § 154(b)(1)(C), which authorizes extensions when delays are the result of appellate review, specifically when “the patent was  issued under a decision in the review  reversing an adverse determination of patentability.” SawStop had appealed to the PTAB regarding claims for two patents: “the ’476 patent” and “the ’796 patent.” Regarding the ’476 patent, the Federal Circuit held that a patent term extension could not be granted because SawStop’s appeal to the PTAB “resulted in no substantive change in the patentability” of the relevant claim (both the PTO and the PTAB had rejected the claim, but on different grounds). Regarding the ’796 patent, the Federal Circuit held that a patent term extension did not apply because the statute requiring a patent be “issued under a decision in review” means “that at least one claim must ‘issue under’ the mandate of the appellate decision.” In the ’796 patent, the claim appealed to the district court did not issue in the patent.