Concurrent Proceedings

New Director’s Interest in Predictability To Drive PTAB Change

As pointed out yesterday over at IPWatchdog, the USPTO Solicitor has withdrawn as Intervenor in the Federal Circuit appeal between Telebrands Corporation and Tinnus Enterprises (stemming from PGR2015-00018, challenging a patent pertaining to the well-known Bunch-o-Balloons® product on indefiniteness grounds). The USPTO intervened in the earlier appeal to defend the indefiniteness standard applied in the PGR. This is because the applied standard was stricter than that enunciated in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014). The application of a different, stricter standard caught some by surprise that had not realized that the Federal Circuit endorsed that very standard for agency proceedings in In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014).

I pointed out at the time of this appeal that the Packard indefiniteness standard is grounded in ex parte examination policies and practices.  As such, it was unclear whether the Court’s holding in Packard could be properly extended to AIA trial proceedings. Yet, the Solicitor’s decision to withdraw as Intervenor in the Tinnus dispute is not a sign that the agency lacks faith in its brief. Rather, the change is indicative of a new direction for PTAB trial proceedings. Continue Reading PTAB Likely to Adopt a Philips Construction for AIA Trials in 2018

Federal Circuit to Consider PTAB Sovereign Immunity Defense

State-affiliated entities enjoy immunity from suit in federal courts under the 11th amendment. To date, a handful of such entities have successfully leveraged the same immunity theory to avoid review of their patents before the Patent Trial & Appeal Board (PTAB). While still other Patent Owners have aligned themselves with Native American Tribes in an effort to benefit from their sovereign status in the hopes of avoiding PTAB review.

More recently, in Ericsson v. Regents of the University of Minnesota.the PTAB has determined that sovereign immunity is waived where the sovereign entity files an infringement suit. (here)

Appeal was taken from this decision this week. Continue Reading PTAB Sovereign Immunity Dispute Heads to CAFC

February Webinar to Explore Litigation Strategies & PTAB Antidotes

This month’s edition of the free webinar series will be held on Thursday, February 22nd @ 2PM (EST). The February Webinar is entitled: Roadblock PTAB: Litigation Strategies & IPR Antidotes.

Register (here)

Program Description: In the 5+ years since their inception, AIA Trial proceedings have become invaluable tools for defendants facing patent infringement claims, and thorns in the side of many patent owners. As a result, patent owners have worked hard to more effectively navigate or even altogether circumvent the PTAB. Some of the strategies in the last year, which have faced varying degrees of success, include asserting patents in fast track jurisdictions such as the International Trade Commission (ITC), raising Constitutional challenges to the PTAB’s authority, and structuring ownership to include sovereign entities to leverage sovereign immunity defenses.

The February webinar is presented by R&G PTAB Practice Chair Scott McKeown & IP Litigation Counsel Matt Rizzolo who will offer their insights and experiences relating to potential “PTAB antidotes” that have been used by patent owners, and will discuss how these and other strategies and tactics may fare in 2018 and beyond.

The formal portion of the webinar will begin at 2PM Eastern and will last for approximately 50-60 minutes. After the presentation there will be a Q&A period. To attend the webinar please sign up via the link above. You will receive a registration confirmation email immediately. Two hours prior to the webinar you’ll receive another email with a link and instructions for joining the presentation. CLE credit will be provided (CA, NYC, VA).

Patentee Estoppel Can Shut Down Related Prosecution

Patent prosecutors might consider PTAB estoppel a pure post-grant concern. That is, a litigation issue restricted to district courts after a failed PTAB challenge, or an issue raised in the context of a second-bite at the PTAB apple. But, PTAB estoppel can effect both failed petitioners and unsuccessful patent owners. Patent owner estoppel, often overlooked, is only now beginning to impact patent prosecution.

Prosecutors beware. Continue Reading The PTAB Estoppel Keeping Patent Prosecutors Awake at Night

What Exactly is the “Thrust of the Rejection?”

Every so often a decision comes out of the USPTO’s Patent Trial & Appeal Board (PTAB) or the Federal Circuit that has immediate value for patent prosecutors. For example, back in June, the Federal Circuit analyzed the degree of corroboration necessary for an In re Katz declaration.  Earlier this week, the Court reviewed an appeal from an inter partes reexamination in Honeywell Intl. Inc. v. Mexichem Amanco Holding S.A. de C.V. et al. to determine whether or not the Board’s reliance on a reference different from those of the patent examiners underlying rejections constituted a “new rejection.”  The Court’s discussion, especially that found in the dissent, may help shed light on this somewhat amorphous standard.

While a new rejection analysis may appear to be limited in relevance to patent prosecution and appeals before the PTAB, this same analysis can be helpful in navigating Administrative Procedure Act (APA) compliance in AIA trial proceedings.
First, the “new rejection” framework stems from notice and due process concepts of the APA. As discussed previously in the AIA trial context, 5 U.S.C. § 554(b)(3) prevents the Patent Trial & Appeal Board (PTAB) from introducing new claim interpretation theories without notice, or opportunity to respond.  In patent prosecution and appeals before the PTAB, this procedural concern often manifests itself as a change in a rejection that so changes the “thrust” of the earlier positions that it would violate due process to close prosecution or enter an appeal decision absent further opportunity for the Applicant/Appellant to respond on the merits.

Turning back to Honeywell, the Federal Circuit vacated and remanded the PTAB’s decision rejecting numerous claims in two merged inter partes reexaminations. Part of the reason for the majority’s remand was that the PTAB relied on a new ground of rejection.  Specifically, the PTAB rejected Honeywell’s evidence of unexpected results in light of the “”Omure reference, on the grounds that this reference demonstrated the Patentee had not established a nexus to its secondary indicia evidence.  As noted by the majority, Omure—while briefed by the parties—was not explicitly relied upon by the Examiner. Thus, the Court concluded that the PTAB’s reliance on Omure constituted a new ground of rejection in violation of the APA. (not a “new ground” per se, more a “new evidentiary” basis for denying the patentee’s argument)

Judge Wallach dissented from this part of the opinion, concluding that the PTAB did not issue or rely on a new ground of rejection.  The dissent (here) noted that:

When considering whether the [PTAB] issued a new ground of rejection, the ultimate criterion of whether a rejection is considered new in a decision by the [PTAB] is whether applicants have had fair opportunity to react to the thrust of the rejection.

Which begs the question: What exactly is the “thrust” of a rejection?

Judge Wallach explains that the PTAB is not limited to reciting and agreeing with the Examiner’s rejection verbatim, and may further explain the rejection and respond to parties’ arguments.  Dissent Op. at 2.  On the other hand, if the PTAB finds facts not found by the examiner regarding the differences between the prior art and the claimed invention, and these facts form the basis for the PTAB’s rejection, then the PTAB improperly enters a new ground of rejection.  Id.

Applying this reasoning to the facts of Honeywell, Judge Wallach found the majority’s reliance on statements by the PTAB that they “disagreed” with the Examiner were not sufficient to rise to the level of a new rejection.  Rather, having concluded that the record supported a finding of prima facie obviousness, the PTAB next considered evidence of secondary considerations.  The Board concluded there was no nexus, without relying on Omure.  Thus, according to Judge Wallach, the “PTAB’s analysis of secondary considerations does not include an improper new ground of rejection.”  That is, although the PTAB discussed Omure in other portions of its analysis in rejecting Honeywell’s secondary considerations argument, it was not the principal evidence upon which the PTAB’s rejection was based, and thus should not be considered a new ground of rejection.  Rather, the PTAB was simply providing a more thorough explanation of the Examiner’s conclusion, and limiting the PTAB to “verbatim repetition of the examiner’s office actions…would ill-serve the [PTAB’s] purpose as a reviewing body.”

The takeaway here is that the “thrust” of the rejection balances the interests of notice and due process with the administrative flexibility necessary to explain decisions differently.  Where the “thrust” may be argued to have shifted will depend upon whether or not the difference in explanation is supplementary in nature, or altogether new, principal evidence. As demonstrated by Honeywell reasonable minds may differ in this analysis.

Court Declines Review of Finality Issue

The CAFC first considered the validity of Baxter International’s U.S. Patent 5,247,434 (the ‘434 patent) on appeal from a patent infringement litigation with Fresenius. In that first 2009 appeal (now commonly referred to as Fresenius I), the Court upheld the patent over certain prior art. After Fresenius I, the litigation dispute went back to the district court on a damages related remand.

Meanwhile, in May 2012 a patent reexamination proceeding initiated by Fresenius in 2007 made its way to the CAFC. The reexamination was based on much the same prior art as previously considered in Fresenius I. This time, the CAFC affirmed the determination of the PTAB (then BPAI) that the claims were obvious over the applied prior art applying the more liberal standards for USPTO challengesEn banc review was then sought, but declined by the CAFC. A petition of certiorari on the seemingly conflicting results was also pursued, but denied by the Supreme Court.

Thereafter, Fresenius II made it’s way to the CAFC to determine whether the outstanding damage award of the district court was enforceable in light of the CAFC’s decision in In re Baxter (2012). The CAFC held that since the damage award was not yet final, it was essentially voided by the cancellation of the patent in reexamination. Once again, en banc review was sought, and denied by the CAFC, last summer. A second petition for certiorari was then pursued for Fresenius II. This most recent petition was denied today, finally ending the dispute.

Given the high court’s lack of interest in Fresenius I, which more squarely presented the issue of seemingly conflicting final results, it is not at all surprising that the latest plea to the highest court was also denied.

The amicus briefing in particular sought to inject a broader policy spin on the finality determination of Fresenius II.  But, in the end, the fact pattern of this dispute was simply too unique.  30+ years of ex parte patent reexamination experience has resulted in analogous situations occurring once or twice. While the amicus briefs warned of a flood of reexamination requests in view of the Fresenius result, experience has demonstrated the exact opposite. That is, such ex parte patent reexamination challenges are far from effective, and routinely outlast most litigation disputes. For this reason, the world of post grant patent challenges has evolved since the early 1980’s to the expedited, inter partes style opposition of the America Invents Act. (AIA)

The new patent challenge proceedings of the AIA such as Inter Partes Review (IPR) and Post Grant Review (PGR) must be initiated relatively early in patent disputes, and must conclude within 12-18 months of trial institution. As, such, outside of perhaps the ITC, it would be unlikely for a concurrent court proceeding to reach determination before the USPTO’s Patent Trial & Appeal Board (PTAB). Thus, the concern that these proceedings could serve to undermine an earlier damage award is also misguided.

For the short term at least, Covered Business Method (CBM) patent challenges are the exception. CBM proceedings can be filed late in a litigation. For example the SAP v. Versata dispute is one that immediately comes to mind. Yet, once the anomaly of pre-AIA verdicts are worked out of the system, it is hard to imagine that an infringer would play out years of litigation in the hopes of unplugging a significant damage award by CBM (if even available), or take their chances on a slow, one-sided reexamination proceeding.

Concurrent Post Grant Proceedings with the Same Real Party in Interest

One of the more intriguing aspects of the new patentability trials of the America Invents Act (AIA) is their potential interplay with legacy post grant proceedings such as patent reissue, ex parte and inter partes patent reexamination. In formulating the rules to implement the new AIA proceedings, namely, Inter Partes Review (IPR), Post Grant Review (PGR) and the Covered Business Method (CBM) review, the USPTO did not specifically define how conflicting proceedings would be processed. For example, the first half of 35 U.S.C. § 325(d) explains that the Board may provide for the “stay, transfer, consolidation, or termination” of either of the conflicting proceedings. Exactly how those determinations would be made was explained as a “case-by-case basis.”

The first PTAB proceeding to examine such issues is IPR 2013-00033. In this proceeding, CBS Interactive petitioned for IPR of patent 7,155,241, assigned to Helferich Patent Licensing. The petition challenged several of the patent’s dependent claims. Concurrently, an inter partes patent reexamination (95/001,864) is also pending, challenging all the of independent claims in the patent. The IPR and reexamination did not challenge any of the same claims, but the same real party in interest asserted some of the same grounds of unpatentability with respect to the same prior art.  In examining the potential conflict between the proceedings, the PTAB opted to stay the reexamination proceeding pending termination/completion of the Review, explaining:

The Board will not ordinarily stay a reexamination because, in absence of good cause, reexaminations are conducted with special dispatch. Conducting the reexamination concurrently with the instant proceeding, however, would duplicate efforts within the Office and could potentially result in inconsistencies between the proceedings. Notably, since all of the challenged claims are depended from the reexamination claims directly or indirectly, the Patent Owner could amend the independent claims or other claims in the reexamination which in turn could change the scope of the challenged claims while the Board is conducting its review. Further, the patentability of all of the independent claims would be determined in both the instant proceeding and the reexamination based on the same grounds of unpatentability.

In addition, the Board is required to determine whether to institute an inter partes review within 3 months after receiving a preliminary response from the Patent Owner, or the date on which such a response is due (i.e., January 29, 2013). See 35 U.S.C. § 314(b), as amended by the America Invents Act (AIA). The final determination of any review instituted will normally be issued no later than 1 year from institution. See 35 U.S.C. § 316(a)(11), as amended by AIA, and 37 C.F.R. § 42.100(c). Any Board decision on whether to institute a review or final written decision with respect to the patentability of the challenged claims will likely simplify the issues in the reexamination.

(Order here)

As explained above, this case was especially unique due to the segregation of claims in each proceeding. Co-pending proceedings with the same claims and art should be relatively uncommon if the Board rejects those petitions that are directed to issues previously presented to the Office. In this regard, the second half of 35 U.S.C. § 325(d) provides:

In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because,the same or substantially the same prior art or arguments previously were presented to the Office.

As noted above, the CBS case was unique as being directed to different claims, otherwise, the petition for IPR would likely be denied pursuant to the the second half of 325(d).

The Board also noted, perhaps because such situations are not expected to be very commonplace, that the interruption of an ongoing patent reexamination will not be typical. Still, in those rare situations where a same real party in interest (challenger) is found in two conflicting post grant proceedings, even if the Board declines to stay the reexamination, the Patentee may be able to seek the same relief elsewhere within the Office.

For example, although unstated in the the Order, IPR is significantly faster than patent reexamination. Indeed, speed was a significant focus of the AIA’s re-invention of the previous inter partes reexamination proceeding. The speed consideration is important because, as here, where the petitioner in the IPR and reexamination are the same real party in interest, the estoppel of the faster IPR proceeding controls. So, win or lose, the co-pending reexamination would be terminated/vacated as a result of the IPR in a mere 12 months from institution. Assuming the Board did not stay the inter partes reexamination in this instance, the patent owner would have reasonable grounds to petition for suspension of the reexamination pending the relatively imminent estoppel result. MPEP 2684.04; Sony Computer Entertainment America Inc. v. Dudas 85 USPQ2d 1594 (E.D. VA 2006). Of course, this petition would not be decided by the Board, but instead, by the Office of Patent Legal Administration (OPLA) Clearly, once a co-pending IPR is ordered, a patent owner faced with fighting the same battle in reexamination, from a same requester, will seemingly be faced with an extraordinary circumstance consistent with 37 C.F.R. § 1.183. And, it would seem the USPTO has better use of their patent reexamination resources.

(Note: There is no petition option for a co-pending ex parte proceeding. This is because there is no such statutory authority to suspend an ex parte patent reexamination. Ethicon Inc., v. Quigg 849 F.2d 1422).

CAFC Denies En Banc Review of In Re Baxter Decision

Earlier this year, the CAFC decided In re Baxter International Inc. (here). As a reminder, in Baxter, the CAFC considered an appeal from the Board of Patent Appeals & Interferences (BPAI) that found certain claims of U.S. Patent 5,247,434 unpatentable in an ex parte patent reexamination.

The request for patent reexamination was filed by Fresenius USA Inc. in 2007 during a patent infringement litigation with Baxter. Interestingly, the Court first considered the validity of the ‘434 patent on appeal from that litigation. In that first appeal, based on some of the very same art applied in the reexamination, the Court found the patent not invalid in 2009. In the second appeal, decided in May of 2012, the same art was presented to the Court. Viewing the same art in 2012, on appeal from the BPAI, the Court affirmed the determination of the BPAI that the claims were obvious over the applied prior art.

Judge Newman issued a strong dissent to the second outcome, explaining that “[t]he validity of the Baxter patent was resolved upon litigation in the district court and on appeal to the Federal Circuit. This judgment cannot be “revised, overturned or refused full faith and credit by another Department of Government. . . .. Nonetheless, the court again departs from this principle, trivializes our prior final judgment, and simply defers to the conflicting agency ruling. This is improper.”

Not surprisingly, Baxter petitioned for rehearing and en banc review of the earlier decision.

This week, the Court denied the petition. The concurring opinion noted the philosophy of the majority as follows:

. . .In a court proceeding, a patent is not found “valid.” A judgment in favor of a patent holder in the face of an invalidity defense or counterclaim merely means that the patent challenger has failed to carry its burden of establishing invalidity by clear and convincing evidence in that particular case—premised on the evidence presented there. . . . If the PTO later considers the validity of that same patent, it does so based on the evidence before it and under the lesser burden of proof that applies in reexamination proceedings. As the majority notes, Congress granted the PTO the right to act within the realm of its authority. . . ..

These conclusions do not mean, however, that, when the PTO does act in the context of a reexamination proceeding, its conclusions can alter the binding effect of a prior judgment in a judicial proceeding. They cannot, and the PTO concedes as much in its response to the petition for rehearing en banc when it states that “[i]f a federal court awards relief to a patent holder against an infringer, a subsequent reexamination decision that the patent is invalid does not disturb the judgment of the court or alter its binding effect on the parties.” . . .

As the patent reexamination was ex parte, Fresenius could not participate in the appeal. Here, the court seems to reason that yes, the patent can fall in reexamination, but Fresenus will still be bound to the first result. Arguably, this line of reasoning does not comport with the earlier decisions of the Court in the Translogic or Standard Havens cases.

Judge Newman was quick to point out this inconsistency, noting:

It is time for this court to confront its conflicting precedent, founded in Standard Havens Products, Inc. v Gencor Industries, Inc., 996 F.2d 1236, 1993 WL 172432 (Fed. Cir. May 21, 1993), where this court held that “contrary to the assumption of the trial court, the reexamination proceeding ‘would control’ the infringement suit.” Id. See also In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007); Translogic Tech., Inc. v. Hitachi,Ltd., 250 Fed. Appx. 988 (Fed. Cir. 2007).

In Standard Havens, the Court explained that a patent lost in patent reexamination is void ab initio; perhaps the majority can distinguish this discussion as dicta. As to Translogic, the BPAI and district court appeals arrived at the CAFC at the same time, so, it could be reasoned that res judicata was not an issue.

One issue that I found confusing in the Order was the repeated reference to USPTO proceedings as examining “patent validity.” The USPTO does not assess patent validity at all….the agency assesses patentability. The reasoning of the majority would have been  easier to digest had the Order made this distinction. As to Fresenius….although the reexamination killed the patent, the Court seems to reason that the earlier judgment still stands.

Claim-by-Claim Application of RLP Standard a Problem for Patent Challengers in Late Stage, Parallel Litigation 

As the era of Inter Partes Patent Reexamination (IPX) draws to a close, recent third party requesters are finding the the new standard for initiating IPX to be quite problematic. The higher standard, has led to a greater percentage of partial and full IPX denials.

A random review of 80 requests filed under the new Reasonable Likelihood of Prevailing (RLP) standard reveals over 25 requests that were either partially (or even fully denied by examiners). Compared to the prior grant rate of close to 95%, it would seem the new “higher standard” is having Congress’ desired effect.

Of course, when the entire request is denied, requesters may, while time permits, digest the examiner’s comments, polish their proposed rejections, and simply file again. However, this option disappear on September 16th, when IPX is discontinued in favor of the new post grant provisions of the AIA. Those IPX filers that are in parallel litigation, and have their IPX requests denied closer to the September deadline, may soon be forced into some very unfavorable positions. 

First, requesters that are involved in litigations that were initiated (by service of complaint) more than 12 months prior to September 16th will not be able to simply file an Inter Partes Review. As the new IPR statutes preclude late stage litigants from seeking the help of the USPTO. So, after September 16th, refiling may not be an option.

Second, a denied requester can petition the Director’s to review the examiner’s denial of IPX. However,  judging from the few decisions recently rendered, none were found persuasive and the Director’s decision is final and non-appealable. 

Third, a request for ex parte reexamination (EXP) is a less robust option due to the loss of requester participation rights.

For those requesters that are faced with a partial IPX order (less than all requested claims being reviewed), the options are even more problematic. While the IPX proceeding advances in prosecution, a requester’s only option is to petition for relief to the director of the examiner’s determination not to reexamine some claims of the request. A second IPX cannot (absent Director approval) be requested by virtue of 35 U.S.C. § 317; and 37 C.F.R. 1.907. Likewise, for late-stage litigants, IPR would not be available as a second option.

Review of recent requests (both granted and fully or partially denied)  provides insight into the Office’s interpretation of the new RLP threshold. Examiner’s seem to be applying the standard as “if I can reject a particular claim, grant the proceeding as to that claim; if I can’t reject a particular claim, deny the proceeding as to that claim.” In other words, the USPTO is applying the RLP standard on a claim by claim basis rather than “if I can reject at least one claim in the request, grant the proceeding for all requested claims and then either reject claims (adopt rejections) or confirm claims (refuse to adopt rejections) as appropriate”.

Yet, noticeably absent from the reviewed petitions was any argument that the examiner has misapprehend how to apply the new threshold to the proceeding.  The language of the statute makes clear:  “the information presented in the request shows that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request.”  Nowhere does the new statute state or imply that the threshold should be applied on a claim by claim basis, as is typically the case with “SNQ” practice

September is shaping up to be a very busy month for all.

CAFC Forced to Disturb Earlier Ruling Based on More Liberal Patent Reexamination Standards


Patent reexamination is often initiated in parallel with an ongoing infringement litigation. In some cases, an infringer that fails to prove invalidity in the courts can effectively “undo” the effect of the earlier court judgement via an ex parte patent reexamination (EXP) filing.


Back in December, the CAFC considered this “do over” tactic in the case of In re Construction Equipment. Last week, the very same procedural fact pattern presented itself to the CAFC. Once again, Judge Newman decried the potential undermining of previously settled court rulings via ex parte patent reexamination.


As a reminder, when initiating a parallel inter partes proceeding (IPX) parallel to a district court litigation, the first of the proceedings to conclude (litigation or IPX) controls the outcome of the other by operation of statutory estoppel. As such, a final holding in the parallel court proceeding will end an ongoing IPX. Moreover, the losing party would be precluded from seeking IPX at a later date. As such, an infringer that fails to prove invalidity in the district court cannot hope to be saved by a parallel IPX; not so with EXP.


EXP has no such statutory “shut off valve.” Thus, even a party that was bound by IPX estoppel could file a request for EXP in an attempt to “undo” the effect of an the earlier court judgement, as was the case a few months back in the case of In re Construction Equipment, and again last week in the case of In re Baxter International Inc. (here)


In Baxter, the CAFC considered an appeal from the Board of Patent Appeals & Interferences (BPAI) that found certain claims of U.S. Patent 5,247,434 unpatentable as a result of EXP. The Court affirmed the BPAI despite the fact that in 2009, the CAFC affirmed a district court ruling finding the very same claims not invalid. The majority (Lourie, Moore) explained:


Lest it be feared that we are erroneously elevating a decision by the PTO over a decision by a federal district court, which decision has been affirmed by this court, the following additional comments must be made. When a party who has lost in a court proceeding challenging a patent, from which no additional appeal is possible, provokes a reexamination in the PTO, using the same presentations and arguments, even with a more lenient standard of proof, the PTO ideally should not arrive at a different conclusion.

However, the fact is that Congress has provided for a reexamination system that permits challenges to patents by third parties, even those who have lost in prior judicial proceedings. Usually one would expect that any such reexamination, such as the one before us, would raise new issues. In this case, the patent examiner relied on new prior art that had not been raised in the prior district court proceeding. Why Fresenius did not present that prior art before the district court we do not know. But the Director apparently found that a substantial new question of patentability had been raised and the examiner was then entitled to conduct a reexamination on the basis of the new art presented and her search of the prior art. Thus, this case is not about the relative primacy of the courts and the PTO, about which there can be no dispute. Finally, we could not conclude that the PTO was barred from conducting the reexamination of the ’434 patent because of the final judgment in Fresenius without over-ruling Ethicon and Swanson, which we cannot do.

Consistent with her earlier dissent in In re Construction Equipment, Judge Newman argued:

Administrative agency override of judicial final decisions has no counterpart in any other field of subject matter. From the inception of judicial process in the nation, it was established that decisions of Article III courts are not subject to negation by proceedings in the other branches. The validity of the Baxter patent was resolved upon litigation in the district court and on appeal to the Federal Circuit. This judgment cannot be “revised, overturned or refused full faith and credit by another Department of Government.” Chi. & S. Airlines, 333 U.S. at 114. Nonetheless, the court again departs from this principle, trivializes our prior final judgment, and simply defers to the conflicting agency ruling. This is improper.

I support the concept of reexamination as an efficient and economical alternative to litigation in appropriate cases. My concern is with the distortion of this purpose, which was designed to provide a path to relief not available through the existing examination process. It was not intended to undermine the finality of judicial process; it was not intended to negate the repose provided by adjudication.

The only patents that are reexamined, like the only patents that are litigated, are patents on inventions that are of value. Most reexamination requests are granted by the PTO. Reexamination of the Baxter patent was requested by Fresenius in 2005, two years into the litigation of Fresenius’ declaratory judgment action against Baxter. The reexamination request presented to the PTO the same references that Fresenius had presented in the litigation. Judgment in the district court was adverse to Fresenius, and the Federal Circuit’s final judgment was issued in 2009, a year before the reexamination decision of the PTO Board. The Board stated that “the agency is not bound by the court’s determination.” BPAI Op. at 26. However, when there has been full litigation and final adjudication under Article III, the judicial resolution controls. Instead, my colleagues ignore this court’s prior decision, which is the law of this case, and simply defers to the PTO, stating that its reexamination ruling is “supported by substantial evidence.” Op. at 11–13 & 16. The nature of the burden of proof does not overcome the strictures of judicial finality.


The ability to file an ex parte patent reexamination as a “do over” relative to an adverse ruling of the courts remains a viable option even after the America Invents Act (save for those filers subject to the estoppel effect of Inter Partes Review or Post Grant Review).