DCT

1:19-cv-01198

SawStop Holding LLC v. Andrei Iancu

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I. Executive Summary and Procedural Information

  • Case Name: SawStop Holding LLC v. Iancu
  • Parties & Counsel:
  • Case Identification: 1:19-cv-01198, E.D. Va., 09/17/2019
  • Venue Allegations: Venue is asserted in the Eastern District of Virginia pursuant to 35 U.S.C. § 154(b)(4)(A), which governs civil actions against the Director of the USPTO.
  • Core Dispute: Plaintiff challenges the USPTO Director's final decision denying a patent term adjustment, arguing that the USPTO miscalculated the adjustment period for U.S. Patent No. 9,522,476 by 841 days.
  • Technical Context: The patent-in-suit relates to safety systems for power equipment, such as table saws, designed to detect contact with an operator and rapidly stop or retract the cutting tool to prevent serious injury.
  • Key Procedural History: The central issue arises from a Patent Trial and Appeal Board (PTAB) decision that reversed an Examiner's obviousness rejection of a key claim but simultaneously issued a new ground of rejection for that same claim. The USPTO's position is that such a mixed decision does not qualify as a "reversing" decision that would trigger additional patent term adjustment, a statutory interpretation Plaintiff contests.

Case Timeline

Date Event
1999-10-01 '476 Patent Earliest Priority Date Claimed
2010-08-20 U.S. Patent Application No. 12/806,829 (the parent application) filed
2012-09-11 USPTO Examiner issues Final Rejection
2012-12-11 Applicant files Notice of Appeal to the PTAB
2013-05-13 Jurisdiction over the application passes to the PTAB
2015-08-31 PTAB issues Decision on Appeal
2016-12-20 U.S. Patent No. 9,522,476 issues with a 193-day term adjustment
2017-02-13 Applicant files for Patent Term Adjustment, requesting an additional 841 days
2017-12-18 USPTO issues a Redetermination denying the request
2018-02-08 Applicant files a Renewed Application for Patent Term Adjustment
2019-03-25 USPTO Director issues final decision denying the request
2019-09-17 Complaint filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,522,476 - “Power Equipment with Detection and Reaction Systems”

  • Patent Identification: U.S. Patent No. 9,522,476, “Power Equipment with Detection and Reaction Systems,” issued December 20, 2016.

The Invention Explained

  • Problem Addressed: Power equipment such as table saws and miter saws include cutting tools that present a significant risk of severe injury to an operator (Compl. ¶1; ’476 Patent, col. 5, ll. 40-45). Conventional safety guards can be effective but often must be removed for certain types of cuts, leaving the operator exposed to the moving blade.
  • The Patented Solution: The invention is a safety system that detects a dangerous condition, such as an operator's body contacting the cutting tool, and triggers a rapid reaction to mitigate injury (’476 Patent, Abstract). The system can include a detection subsystem that senses contact and a reaction subsystem that, for example, engages a brake to stop the blade or retracts the blade away from the operator (See e.g., ’476 Patent, Fig. 1).
  • Technical Importance: The technology provides a safety mechanism that functions even when traditional physical guards are not in use, addressing a critical gap in power tool safety (Compl. ¶1).

Key Claims at a Glance

  • The complaint’s allegations center on the prosecution history of application claim 11, which issued as claim 1 of the ’476 Patent (Compl. ¶12-13).
  • The essential elements of independent claim 1 are:
    • A table saw comprising a support structure, an arbor block pivotally attached to the support structure, a rotatable arbor, and a circular blade.
    • Electronics that detect contact between a person and the blade via capacitive coupling.
    • An oscillator that generates an oscillating signal imparted on the blade.
    • An explosive triggerable by the electronics to cause the arbor block to pivot to mitigate injury.

III. The Accused Agency Action

  • Action Identification: The Director of the USPTO's final Decision on Renewed Application for Patent Term Adjustment, issued March 25, 2019 (Compl. ¶1, 18).
  • Functionality and Market Context: The Director's Decision is the final administrative action denying SawStop's request to increase the Patent Term Adjustment (PTA) for the ’476 Patent from 193 days to 1,034 days (Compl. ¶1, 15). The decision holds that SawStop is not entitled to an additional 841 days of adjustment under 35 U.S.C. § 154(b)(1)(C)(iii) for the time the application was under appeal at the PTAB (Compl. ¶18, 24). The decision relies on the USPTO's interpretation that this statutory provision for PTA does not apply when the PTAB, while reversing an examiner's rejection, simultaneously subjects the claim to a new ground of rejection (Compl. ¶18-20). The complaint alleges this denial improperly shortens the enforceable life of the patent (Compl. ¶23).

No probative visual evidence provided in complaint.

IV. Analysis of Legal Allegations

The complaint does not allege patent infringement. Instead, it alleges that the USPTO Director’s decision was based on a flawed interpretation of the patent term adjustment statute, 35 U.S.C. § 154 (Compl. ¶26). The core dispute is one of statutory construction.

The complaint alleges that the PTAB’s decision on appeal for the underlying application reversed the examiner’s "adverse determination of patentability" regarding claim 11 (Compl. ¶21). Plaintiff argues that because the patent ultimately issued after this reversal, the plain text of § 154(b)(1)(C)(iii) mandates an adjustment for the time spent on appeal, which it calculates as 841 days (Compl. ¶21, 24).

The Director's Decision, however, found that because the PTAB also entered a "New Ground of Rejection" for the same claim, the patent was not "issued under a decision in the review reversing an adverse determination of patentability" as required by the statute and the USPTO's own regulations (Compl. ¶20, 22). The complaint frames this as the USPTO improperly adding a requirement to the statute—that the reversal must be clean, "without subjecting the claim to a new rejection"—which is not present in the law's plain text (Compl. ¶19, 27).

V. Key Statutory Term for Construction

  • The Term: "in which the patent was issued under a decision in the review reversing an adverse determination of patentability" (from 35 U.S.C. § 154(b)(1)(C)(iii)).
  • Context and Importance: The interpretation of this phrase is the central legal question of the case. Its meaning determines whether the 841-day period during which the application was on appeal to the PTAB should be added to the patent's term.
  • Intrinsic Evidence for Interpretation: The dispute centers on the statute itself, as interpreted through agency regulations and decisions.
    • Evidence for a Broader Interpretation (Plaintiff's View): The complaint argues that the plain text requires only two conditions: (1) a "decision in the review reversing an adverse determination" (which it claims the PTAB decision was, as it reversed the examiner's rejection) and (2) the patent was "issued under" that decision (Compl. ¶21). The complaint asserts that the statute's purpose is to prevent an applicant's patent term from being shortened by an "Examiner's erroneous rejection," a purpose it claims is served by its interpretation (Compl. ¶23).
    • Evidence for a Narrower Interpretation (Defendant's View): The complaint states that the Director's Decision relied on a USPTO interpretation articulated in the Federal Register, which defines a "final decision in favor of the applicant" as one that "reverses all of the rejections of at least one claim (without subjecting the claim to a new rejection)" (Compl. ¶18-19). Because the PTAB subjected claim 11 to a new rejection, the Director found the patent was not issued under a qualifying "reversing" decision (Compl. ¶20).

VI. Other Allegations

  • Administrative Procedures Act (APA) Violations: The complaint alleges that the Director's Decision, based on the allegedly flawed statutory interpretation, was "arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law" and/or in "excess of statutory jurisdiction, authority, or limitations," constituting violations of the APA, 5 U.S.C. § 706 (Compl. ¶28, 35). Plaintiff seeks a judgment declaring the Director's decision unlawful and compelling recalculation of the patent term (Compl. ¶38; Prayer for Relief B).

VII. Analyst’s Conclusion: Key Questions for the Case

This case presents a pure question of law concerning the patent term adjustment statute, rather than a factual dispute over infringement. The outcome will likely depend on the court's resolution of the following central questions:

  • A core issue will be one of statutory interpretation: Does the phrase "reversing an adverse determination of patentability" in 35 U.S.C. § 154(b)(1)(C)(iii) encompass a PTAB decision that simultaneously reverses an examiner's rejection while instituting a new ground of rejection for the same claim?
  • A related key question will be one of agency deference: To what extent, if any, should the court defer to the USPTO's long-standing interpretation of the PTA statute, as articulated in its regulations and the Director's final decision?