Case: 21-1537 Document: 50 Page: 1 Filed: 09/14/2022
United States Court of Appeals
for the Federal Circuit
______________________
SAWSTOP HOLDING LLC,
Plaintiff-Appellant
v.
KATHERINE K. VIDAL, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Defendant-Appellee
______________________
2021-1537, 2021-2105
______________________
Appeals from the United States District Court for the
Eastern District of Virginia in Nos. 1:19-cv-01198-LMB-
MSN, 1:20-cv-01212-LMB-MSN, Judge Leonie M.
Brinkema.
______________________
Decided: September 14, 2022
______________________
JARED WESTON NEWTON, Quinn Emanuel Urquhart &
Sullivan, LLP, Washington, DC, argued for plaintiff-appel-
lant. Also represented by DAVID FANNING, SawStop, LLC,
Tualatin, OR.
HUGHAM CHAN, Office of the United States Attorney for
the Eastern District of Virginia, United States Department
of Justice, Alexandria, VA, argued for defendant-appellee.
Case: 21-1537 Document: 50 Page: 2 Filed: 09/14/2022
2 SAWSTOP HOLDING LLC v. VIDAL
Also represented by JESSICA D. ABER; KAKOLI CAPRIHAN,
MICHAEL S. FORMAN, THOMAS W. KRAUSE, BRIAN RACILLA,
FARHEENA YASMEEN RASHEED, Office of the Solicitor,
United States Patent and Trademark Office, Alexandria,
VA.
______________________
Before NEWMAN, LINN, and CHEN, Circuit Judges.
LINN, Circuit Judge.
SawStop Holding LLC (“Sawstop”) appeals from the
District Court’s grant of summary judgment in favor of the
United States Patent and Trademark Office (“PTO”) in
each of two suits filed by Sawstop to challenge the denial
of patent term adjustments (“PTAs”) for Sawstop’s U.S. Pa-
tent Nos. 9,522,476 (“’476 patent”) and 9,927,796 (“’796 pa-
tent”). For the reasons discussed infra, we affirm.
I
To compensate for certain delays during prosecution of
patents, Congress added provisions for patent term adjust-
ment in the American Inventors Protection Act of 1999.
The Act directs the PTO to grant patent term adjustments
to offset three categories of prosecution delay set forth in
35 U.S.C. § 154(b)(1)(A), (B), and (C). Subsection (A) delay
accrues when the PTO fails in certain specified ways to
timely respond to the applicant. Subsection (B) delay ac-
crues when the PTO fails to issue a patent within a certain
time from filing. Neither of those subsections is at issue in
this case. At issue in this consolidated appeal is subsection
(C) delay, which is codified in
35 U.S.C. § 154(b)(1)(C) and
accrues for certain delays associated with appellate review.
That provision reads, inter alia:
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
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SAWSTOP HOLDING LLC v. VIDAL 3
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.
35 U.S.C. § 154(b)(1)(C) (emphasis added). The meanings
of the two italicized phrases noted above are at the center
of these appeals.
The patents at issue in these cases are both directed to
power saws with a safety feature that instantly stops the
saw blade upon contact with flesh. Issuance of these pa-
tents was delayed by appeals before allowance. For both
patents, Sawstop requested PTA for (C) delay under the
specific facts surrounding the appeals pursued in each
case.
With respect to the application that led to the issuance
of the ’476 patent, claim 11 was finally rejected by the ex-
aminer as being obvious over Figures 7–9 of Lokey, which
show a table saw with a rubber block engaging to stop
blade rotation, and Figures 1–5 of Lokey, which show a
handheld saw with a pivoting cam brake, in combination
with the disclosure of Fergle, which teaches an explosive
actuator. Sawstop appealed that rejection to the Patent
Trial and Appeal Board (“Board”).
The Board held that “the examiner [did] not make suf-
ficient findings regarding modifying the structure of
Lokey’s embodiment of Figures 7–9 to incorporate cam
brake members 24 of Lokey’s embodiment of Figures 1–5,”
and thus concluded that “the Examiner [had] not made the
initial factual findings required to demonstrate a prima fa-
cie case of obviousness of claim 11.” J.A. 1826. Neverthe-
less, the Board held that Lokey Figures 7–9 were sufficient
in themselves to teach the pivotable component limitation
in claim 11 and render claim 11 obvious in combination
Case: 21-1537 Document: 50 Page: 4 Filed: 09/14/2022
4 SAWSTOP HOLDING LLC v. VIDAL
with Fergle. It thus “AFFIRMED” the rejection of
claim 11, J.A. 1829, on “a NEW GROUND OF
REJECTION,” J.A. 1827.
On remand, Sawstop reopened prosecution to address
the new ground of rejection. It filed several amendments
and a request for continued examination (“RCE”). The ex-
aminer eventually allowed claim 11, which issued as
claim 1 of the ’476 patent. The PTO made no adjustment
to the term of the patent for the time spent on the appeal.
Sawstop sought redetermination of that decision. The PTO
denied Sawstop’s request. In doing so, the PTO cited the
language of
35 U.S.C. § 154(b)(1)(C)(iii) and held that “the
claim was not issued under a decision in the review revers-
ing an adverse determination of patentability” because
“the claim remain[ed] under rejection after the Board deci-
sion” and “the patent only issue[d] after further prosecu-
tion” and amendment. J.A. 2246–47.
Thereafter, Sawstop filed a complaint in the District
Court for the Eastern District of Virginia challenging the
PTO’s interpretation of
35 U.S.C. § 154(b)(1)(C)(iii) and the
denial of PTA under the Administrative Procedure Act
(“APA”). Sawstop and the PTO filed cross motions for sum-
mary judgment. The District Court denied Sawstop’s mo-
tion and granted the government’s motion, holding that
because claim 11 was subject to a new ground of rejection
on appeal, the ’476 patent application was not “issued un-
der a decision in the review reversing an adverse determi-
nation of patentability,” and thus was not eligible for PTA
under § 154(b)(1)(C)(iii). Sawstop Holding LLC v. Iancu,
496 F. Supp. 3d 944, 950 (E.D. Va. 2020) (“’476 Decision”).
With respect to the ’796 patent, prosecution culminated
in the examiner finally rejecting independent claim 1 on
two bases—anticipation and provisional non-statutory ob-
viousness-type double patenting (“double patenting”)—and
finally rejecting dependent claim 2 for anticipation. Saw-
stop appealed all three rejections to the Board. The Board
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SAWSTOP HOLDING LLC v. VIDAL 5
affirmed both rejections of claim 1, but reversed the antic-
ipation rejection of claim 2, rendering it patentable.
Sawstop then filed a complaint in the District Court for
the District of Columbia challenging only the Board’s an-
ticipation rejection of claim 1. The complaint did not ad-
dress the provisional double patenting rejection.
Ultimately, the District Court reversed the anticipation re-
jection of claim 1. In doing so, it had no reason to and did
not opine on the provisional double patenting rejection. On
remand, the Board noted the outstanding provisional dou-
ble patenting rejection, and gave Sawstop two options for
allowance: Sawstop could file a terminal disclaimer or can-
cel claim 1 and rewrite claim 2 as an independent claim.
J.A. 877. Sawstop chose the latter.
The Board thereafter issued a notice of allowance of
claim 2 and other claims dependent therefrom.
J.A. 887–88. Sawstop nevertheless filed an RCE and con-
tinued prosecution through several additional amend-
ments of the claims, drawings, and specifications.
Eventually, the PTO issued a notice of allowance of the ’796
patent. The PTO granted PTA under
35 U.S.C.
§ 154(b)(1)(C)(iii) for the delay incurred in the successful
reversal of the rejection of claim 2 at the Board. But the
PTO denied any additional PTA for the delay caused by the
appeal of claim 1 to the District Court.
Like it did for the ’476 patent, Sawstop filed a com-
plaint in the Eastern District of Virginia challenging that
denial. The District Court entertained cross motions for
summary judgment, ruling in favor of the PTO. It held that
the ’796 patent was not entitled to PTA for Sawstop’s ap-
peal to the District Court for the District of Columbia be-
cause the appeal did not “revers[e] an adverse
determination of patentability” as required by
35 U.S.C.
§ 154(b)(1)(C)(iii), as claim 1 remained subject to the out-
standing provisional double patenting rejection and was
thus unpatentable both before and after the appeal.
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6 SAWSTOP HOLDING LLC v. VIDAL
Sawstop Holding LLC v. Hirshfeld, No. 1:20-cv-1212,
2021
WL 2021122, at *6–7 (E.D. Va. May 20, 2021) (“’796 Deci-
sion”). The District Court also held that because claim 1
was eventually cancelled and thus did not issue in the pa-
tent, the ’796 patent did not “issue under” an adverse de-
termination of patentability as that phrase is used in
35
U.S.C. § 154(b)(1)(C)(iii) and was not eligible for additional
PTA for that independent reason.
Id. at *8.
Sawstop appeals the summary judgments in both
cases. We have jurisdiction over final decisions of the Dis-
trict Court in these patent cases under
28 U.S.C. §§ 1291
and 1295.
II
We review the grant of summary judgment according
to the law of the regional circuit. Intra-Cellular Therapies,
Inc. v. Iancu,
938 F.3d 1371, 1379 (Fed. Cir. 2019). The
Fourth Circuit reviews the grant of summary judgment de
novo. Norfolk S. Ry. Co. v. City of Alexandria,
608 F.3d
150, 156 (4th Cir. 2010).
We review the PTO’s PTA award under the APA.
Chudik v. Hirshfeld,
987 F.3d 1033, 1039 (Fed. Cir. 2021);
35 U.S.C. § 154(b)(4)(A). The agency determination may
be set aside only if it is “arbitrary, capricious, an abuse of
discretion, or otherwise not in accordance with law.”
5
U.S.C. § 706(2)(A). Where administrative deference under
Chevron is inapplicable, see Chevron, U.S.A., Inc. v. Nat’l
Res. Def. Council, Inc.,
467 U.S. 837 (1984), or where the
application of Chevron would make no difference to our in-
terpretation of the statute, “we determine the ‘best inter-
pretation’ of the statute for ourselves, while giving the
agency’s position such weight as warranted under Skid-
more.” Chudik, 987 F.3d at 1039 (quoting Rimini St. Inc.
v. Oracle USA, Inc.,
139 S.Ct. 873, 880 (2019) and citing
Skidmore v. Swift & Co.,
323 U.S. 134, 139–40 (1944)). In
this case no deference is necessary under either Chevron or
Case: 21-1537 Document: 50 Page: 7 Filed: 09/14/2022
SAWSTOP HOLDING LLC v. VIDAL 7
Skidmore as the plain language of § 154(b)(1)(C)(iii) com-
pels affirmance.
III
In considering the meaning of the phrases at issue in
35 U.S.C. § 154(b)(1)(C)(iii), we begin by reference to the
plain language of the statute itself. United States v. Hohri,
482 U.S. 64, 69 (1987). We recently held that the most nat-
ural 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 de-
cision that reversed a Board unpatentability ruling in the
matter.” Chudik, 987 F.3d at 1039–40. A “reversal” typi-
cally means the undoing by an appellate tribunal of a rul-
ing under review. See id. at 1040. “Type C adjustments
are for delays that are . . . due to . . . successful appeals.”
Supernus Pharms., Inc. v. Iancu,
913 F.3d 1351, 1353 (Fed.
Cir. 2019).
Here, the District Court held that, consistent with our
past statutory construction of the (C) delay provision, the
“unambiguous language imposes two requirements: that
an adverse determination of patentability be reversed, and
that the application reviewed in that appeal issue as a pa-
tent as a result of that reversal.” ’796 Decision,
2021 WL
2021122, at *5; ’476 Decision, 496 F. Supp. 3d at 948. The
District Court also concluded that the PTO did not demon-
strate clear error in judgment in denying the requested
PTA under
35 U.S.C. § 154(b)(1)(C)(iii) for the ’476 and ’796
patents as neither patent met either requirement under
the statute. We find no ambiguity in the language of the
statute and agree with the conclusions reached by the Dis-
trict Court for the reasons more fully set forth infra.
Case: 21-1537 Document: 50 Page: 8 Filed: 09/14/2022
8 SAWSTOP HOLDING LLC v. VIDAL
IV
With respect to the ’476 patent, Sawstop contends that
any examiner rejection overturned on appeal, as was the
examiner’s rejection of claim 11 in this case, qualifies as “a
reversal of a determination of patentability,” regardless of
any new grounds of rejection issued by the Board. Sawstop
argues that the PTO and the District Court improperly in-
terpreted the statutory expression “reverses an adverse de-
termination of patentability” to add a new requirement
that a decision in the review reversing an adverse determi-
nation of patentability must not subject the claims at issue
to a new rejection. According to Sawstop, the PTO reading
finds no support in the statutory text nor serves the under-
lying purpose of compensating the applicant for appellate
delays that are not the applicant’s fault.
The PTO counters by arguing that there was “no rever-
sal of an adverse patentability determination” because
claim 11 was unpatentable before and after the Board’s re-
view in the appeal. According to the PTO, the Board’s set-
ting aside of the rationale of the examiner’s obviousness
rejection is irrelevant because it entered new reasoning to
sustain that same rejection. It also asserts that because
the Board maintained the unpatentability of claim 11, the
’476 patent could not have “issued under” the Board’s deci-
sion.
We do not find Sawstop’s argument persuasive. While
there is no dispute that the Board cast aside the examiner’s
basis for rejecting claim 11, the Board in the same review
found claim 11 unpatentable, albeit for a different reason.
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 lan-
guage 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
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SAWSTOP HOLDING LLC v. VIDAL 9
particular rejection. See Mayo Found. for Med. Educ. &
Rsch. v. Iancu,
938 F.3d 1343, 1345 (Fed. Cir. 2019) (noting
that Type C delay “provides PTA for each day the applica-
tion is pending in . . . a successful appeal to the Patent Trial
and Appeal Board . . . or a federal court” (emphasis added));
Supernus, 913 F.3d at 1353 (“Type C adjustments are for
delays that are . . . due to successful appeals.” (emphasis
added) (citing
35 U.S.C. § 154(b)(1)(C)(iii))). We reject Saw-
stop’s attempt to rewrite the statutory text to mandate
PTA over reversal of a mere “rejection” or “basis for un-
patentability.” Here, the appeal of the determination of pa-
tentability of claim 11 was not “successful” as it was not
“reversed.” The PTO faithfully applied the statutory text
and did not improperly add a new requirement for eligibil-
ity for (C) delay.
The District Court also granted summary judgment on
an independent basis: that claim 11 of the ’476 patent did
not “issue under a decision in the review” because after the
appeal, the claim was subject to a year of additional sub-
stantive prosecution and amendments to address the
Board’s new ground of rejection. As can be appreciated
from the following side-by-side comparison, the claim as is-
sued was not the same as the claim “under a decision in the
review.”
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10 SAWSTOP HOLDING LLC v. VIDAL
Sawstop challenges the District Court’s reasoning, ar-
guing that the claim would not have issued but-for the suc-
cessful appeal, and thus the “patent was issued under a
decision in the review.” Again, we disagree. Under Saw-
stop’s reading, the (C) delay provision could apply when an
adverse determination of patentability is overcome on ap-
peal, regardless of substantive amendments made after the
appeal to secure allowance. This interpretation effectively
reads out the phrase “in which the patent was issued under
a decision in the review,” and thus cannot be sustained.
See Hibbs v. Winn,
542 U.S. 88, 101 (2004) (“A statute
should be construed so that effect is given to all its provi-
sions, so that no part will be inoperative or superfluous,
void or insignificant.”) (quoting 2A N. Singer, Statutes and
Case: 21-1537 Document: 50 Page: 11 Filed: 09/14/2022
SAWSTOP HOLDING LLC v. VIDAL 11
Statutory Construction § 46.06, pp. 181–86 (rev. 6th ed.
2000).
The plain language of “issued under a decision in the
review” means that at least one claim must “issue[] under”
the mandate of the appellate decision. At a minimum, this
means that at least one claim that “issued” must have been
analyzed by the Board or District Court that issued the “de-
cision in the review.” The statutory requirement 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, we affirm the District Court’s determina-
tion that the ’476 patent did not “issue[] under a decision
in the review reversing an adverse determination of pa-
tentability” as that expression is used in
35 U.S.C.
§ 154(b)(1)(C)(iii).
V
The plain language of the (C) delay provision also com-
pels affirmance as to claim 1 of the ’796 patent.
Sawstop argues that the statute only requires the re-
versal of “an adverse determination of patentability” and
the PTO’s interpretation improperly replaces the statutory
“an” with a requirement that “all” rejections of a particular
claim be reversed. Sawstop’s argument again confuses spe-
cific rejections with the determination of patentability. As
noted supra, the singular reversal referenced in the statute
is the determination of patentability of the claim under ap-
pellate review, not a basis for a rejection or number of re-
jections.
We also reject Sawstop’s contention that the PTO’s in-
terpretation of
35 U.S.C. § 154(b)(1)(C)(iii) fails to give ef-
fect to the purpose of the statute. According to Sawstop,
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12 SAWSTOP HOLDING LLC v. VIDAL
the purpose of the statute is to compensate applicants for
certain reductions in patent term that are not the fault of
the applicant. Such a broad reading overlooks the plain
language of the statute, which is not nearly as sweeping as
Sawstop contends. Sawstop provides no basis to support
its contention that (C) delay was intended to categorically
compensate applicants for all appellate delays that were
not the applicant’s fault. As in Chudik, we do not find Saw-
stop’s policy rationale a convincing reason to depart from
the plain meaning of the statute. See Chudik, 987 F.3d at
1034-35, 1040 (affirming a denial of (C) delay where the
examiner repeatedly reopened prosecution to withdraw her
own decision after the applicant filed a notice of appeal).
Sawstop further contends that we should not read “re-
versing an adverse determination of patentability” to re-
quire that the claim be suitable for allowance following
appeal because the separate patent term adjustment pro-
vision for (A) delay, § 154(b)(1)(A)(iii), expressly references
“allowable claims.” Sawstop is incorrect. The use of the
phrase “allowable claims” in the (A) delay provision does
not implicitly exclude considerations of allowability when
reading the phrase “reversing an adverse determination of
patentability” in the (C) delay provisions. Those provisions
reflect different stages of prosecution during which delay
may occur and the different reasons for such delay. The act
giving rise to (A) delay is the PTO’s failure to act after an
appellate decision “in a case in which allowable claims re-
main in the application.” The phrase “allowable claims” in
the (A) delay provision refers to the state of the claims
when the triggering action—PTO inaction—takes place.
This is a wholly different context than that of the (C) delay
provision, “reversing an adverse determination of patenta-
bility,” which accurately reflects that the appellate change
of the patentability of the claims is itself the triggering
event. The acts triggering (A) delay are thus unrelated to
and independent of the acts giving rise to (C) delay, and
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SAWSTOP HOLDING LLC v. VIDAL 13
may have no bearing on the determination of patentability
under review in any particular appeal.
Sawstop argues that the Board’s reversal of the exam-
iner’s anticipation finding of claim 1 was a reversal of an
adverse determination of patentability, and that the pres-
ence of the provisional obviousness-type double patenting
rejection was inapposite as to whether the Board reversed
that adverse determination of patentability. The problem
with Sawstop’s position is that the PTO’s “adverse deter-
mination 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 Dis-
trict Court for the District of Columbia understandably did
not address the double patenting rejection. Sawstop’s suc-
cess in reversing the anticipation rejection left the provi-
sional 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). Like the ’496 pa-
tent, the appellate decision did not reverse an adverse de-
termination of patentability. See ’796 Decision,
2021 WL
2021122, at *6.
Sawstop argues that the remaining rejection did not af-
fect “patentability” because it was non-statutory (because
it was an obviousness-type double patenting rejection) and
provisional (because the obviousness-rendering reference
was an application rather than a patent). Citing In re Mott,
539 F.2d 1291, 1296 (C.C.P.A. 1976), Sawstop argues that
these characteristics mean that the rejection did not have
any force or effect until the obviousness-rendering refer-
ence issued and was thus not a rejection that it could ap-
peal or the District Court could affirm or reject. Sawstop
is incorrect.
First, Sawstop itself recognized that the rejection had
legal effect as it appealed that rejection to the Board and
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14 SAWSTOP HOLDING LLC v. VIDAL
did not claim it was illusory. Moreover, Sawstop never ex-
plained why it could appeal the rejection to the Board un-
der
35 U.S.C. § 134, but not to the D.C. District Court
under
35 U.S.C. § 145. Second, on remand, claim 1 re-
mained subject to the double patenting rejection, which be-
came non-provisional following issuance of the application
on which it was based. This occurred prior to issuance of
the ’496 patent. To overcome that part of the adverse de-
termination of patentability, Sawstop needed to either can-
cel claim 1 and put claim 2 into independent form
(Sawstop’s chosen action) or file a terminal disclaimer. Un-
der either action, the patent was not allowable following
the appeal in light of the pending rejection. For these rea-
sons, we agree with the District Court that the appeal did
not reverse an adverse determination of patentability as
that expression is used in 35 U.S.C § 154(b)(1)(C)(iii).
We also hold that the District Court was correct that
the ’796 patent was ineligible for (C) delay for the inde-
pendent reason that the ’796 patent did not issue under a
decision in the review. The ’796 patent, as issued, did not
include claim 1 as appealed. Rather, Sawstop cancelled
claim 1 and replaced it with an independent form of claim
2, which had been allowed in dependent form prior to the
appeal. Sawstop fails to explain how the ’796 patent issued
under a decision in the review. Sawstop argues in reply
that the statute only requires that the “patent” issue under
a decision in the review, not the “claim” that was the sub-
ject of the appeal. However, that does not change the stat-
utory text that the patent must issue under the decision in
the review. Here, 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. The ’796 patent
therefore did not issue under a decision in the review.
VI
For the foregoing reasons, we affirm the judgments of
the District Court that the PTO did not err in its
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SAWSTOP HOLDING LLC v. VIDAL 15
interpretations of § 154(b)(1)(C)(iii) and did not violate the
APA by refusing to award additional patent term adjust-
ments for (C) delay for the ’796 patent and the ’476 patent.
AFFIRMED
