Abandonment Does Not Invalidate Patent, But May Render It Unenforceable

The magistrate judge recommended granting plaintiff's motion for summary judgment as to defendant's invalidity defense to the extent it was based on a theory of abandonment, i.e., that plaintiff's predecessor intentionally abandoned the patent-in-suit to avoid paying maintenance fees and later obtained reinstatement from the PTO. Under Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 543 F.3d 657, 661 (Fed. Cir. 2008), revival of an abandoned patent is not a "condition for patentability" within the meaning of § 282, so such a theory could not render the patent invalid. However, defendant's abandonment theory could support an inequitable conduct defense if "the patentee falsely represented to the PTO that the failure to pay maintenance fees was unintentional and thereby wrongly induced the PTO to revive the [patent-in-suit]"

Abstrax, Inc. v. Dell, Inc. et al., 2-07-cv-00221
(TXED September 15, 2009, Report & Recommendations) (Everingham, M.J.)