Fresenius v. Baxter: PTO Reexamination Decision Trumps Prior Decisions by both the District Court and the Federal Circuit

By Dennis Crouch

A substantial number of patents being enforced today are involved in parallel proceedings. Most often, these proceedings include an infringement lawsuit in federal court and a post-grant administrative proceeding before the US Patent Office. The law gives both entities power to rule on the validity of the patents in question. However, the Patent Act does not provide guidance for situations where the two political bodies conflict in judgment. An additional complicating factor stems from our Constitutionally mandated national government structure that separates power between the Administration, Congress, and the Courts. In a case decided today, the Federal Circuit says that the PTO’s invalidity decisions trump prior Court Decisions.

In Fresenius USA v. Baxter Int’l. (Fed. Cir. 2013), the Federal District Court granted “Summary Judgment of Validity” of a number of Baxter’s claims found in its U.S. Patent No. 5,247,434. (A kidney dialysis apparatus with a touch screen). In a 2009 decision, the Federal Circuit affirmed a portion of the validity decision – leaving Baxter with a handful of judicially proclaimed valid claims. In a parallel proceeding, the US Patent Office completed its reexamination of the patent and found the identical claims invalid and that decision was affirmed on appeal. The timing is somewhat important and so here is the chronological order:

  1. Court holds patent claims valid on summary judgment and proceeds toward Final Judgment.
  2. PTO finds patent claims invalid in reexamination.
  3. Court issues final judgment enforcing patent claims.
  4. Federal Circuit affirms PTO invalidity finding.

Although the district court did not stay its proceedings, the court was slow enough so that the PTO’s invalidity finding came before the court issued a final judgment in the case. That delay was key, according to the Federal Circuit decision here, since it divested the court of subject matter jurisdiction over the dispute. The Court explained, because of the USPTO decision, “Baxter no longer has a cause of action.”

The Federal Circuit went on to explain that the 2007 validity decision does not count as a final decision for res judicata purposes because it did not conclude the case as a whole.

The majority opinion was written by Judge Dyk and joined by Judge Prost.

In a 30 page dissent, Judge Newman argues that the majority ruling is an unconstitutional violation of separation of powers:

The court today authorizes the Patent and Trademark Office, an administrative agency within the Department of Commerce, to override and void the final judgment of a federal Article III Court of Appeals. The panel majority holds that the entirety of these judicial proceedings can be ignored and superseded by an executive agency’s later ruling.

This holding violates the constitutional plan, for “Judgments, within the powers vested in courts by the Judiciary Article of the Constitution, may not lawfully be revised, overturned or refused faith and credit by another Department of Government.” Chi. & S. Air Lines, Inc. v. Waterman S.S. Corp., 333 U.S. 103 (1948).

It is likely that Baxter will file a petition for writ of certiorari.

130 thoughts on “Fresenius v. Baxter: PTO Reexamination Decision Trumps Prior Decisions by both the District Court and the Federal Circuit

  1. Yep, still no answer, and in true ‘run away and repeat later’ fashion, Malcolm has indeed reposted the banal thoughts in subsequent threads after running away here.

    Real ‘quality’ blogging by that one.

    /eyeroll

  2. LB, you seem to not understand the fundamentals of reissues versus re-examination certificates.  With respect to a reissue, the patent is surrendered; and Congress provided that causes of action are preserved only to the extent that the claims in the new patent are substantially of the same scope as the claims in the surrendered patent.  Causes of action otherwise are extinguished.
     
    With respect to a re-examination, there is no surrender of the original patent.  The patent is not surrendered.  This is a fundamental difference.  Think about it for second.  After you thought about a you will know that there is no extinguishing of pending causes of action because there is no surrender.

     
      The Federal Circuit here has come up with an opinion that is at war with the statutory structure.  It is plainly wrong.
     

  3. Chucksz,
     
    In an earlier case, the Federal Circuit justified not following a District Court judgment regarding validity and the very same references because the burdens of proof were different between the patent office and the courts.  In this case, they effectively imposed  res judicata effect of the patent office ruling on a court case.  They did not apply the rule that what is good for the goose is good for the gander.
     
    Once a claim is canceled from a patent, it can no longer be asserted.  But until it is canceled, it may be infringed.   Once filed, the subsequent cancellation of a claim by the patent office should have no effect on accrued damages. Moreover, the patent owner has a constitutional right to a trial by jury, and that jury’s judgment on the facts cannot be overturned under our Constitution.
     
     
     
     

  4. Please Malcolm, feel free to say something substantive.

    (it should be safe(r) here – you have no agendas or pet theories to throw on a bonfire of your own making)

  5. Leopold,

    Anything actually useful to say? Or did you just feel like charging at the red cape of ‘anon said’?

  6. first ever post of substance

    LOL – welcome back to this planet 6 – you have obviously been gone a very very very long time.

    Office actions? – oops, I welcomed you back too soon.

  7. (you do realize that the parties were in fact the same, right?)

    Nice work, anon. That’ll larn him sumthin.

  8. While I’m delighted to see anon make his first ever post of substance it is regrettable that I must disagree. This “common sense” approach seems like something more suited to an issue of law or something, the finality of the decision should be a mere matter of procedure. As it happens to be with final office actions.

  9. Then try again to comment on each of the example cases Judge Newman pulls from each circuit.

    You are clearly out of your league here.

    Better tr011ing please.

  10. INANE – try again. Your comment at 8:55 belies how ridiculous YOU are (you do realize that the parties were in fact the same, right?)

  11. Try reading the case first

    Done and done.

    Newman’s point isn’t quite as broad as you stated it, but it’s nearly so, and still broad enough to be clearly ridiculous.

  12. This is definitely a big picture item.

    The little circle full of little minds will attempt very hard NOT to understand.

  13. If she’s making that broad a point, she’s pretty obviously wrong

    Try reading the case first INANE.

  14. You don’t need to understand science or patent law to be appointed to the Federal Circuit. The assumption is that you will magically acquire an interest in return for a salary for life and prestige.

  15. This sounds to me like another big picture item. The fed. cir. would like the law to be that the PTO trumps the dist. ct., and it would surely make the greater administration of the patent system smoother. Just like TSM would have and TSM would have.

  16. Her point is that once such a particular issue has been adjudicated by the parties, that particular issue cannot be revisited by another Branch of the government, and any action by the Executive Branch to do so, without or even with the ‘blessing’ of law written by the Legislative Branch violates the constitutional doctrine of separation of powers.

    That is the point Judge Newman is making.

    If she’s making that broad a point, she’s pretty obviously wrong. You should be able to think of lots of reasons why, starting with the fact that the “parties” aren’t the same in both proceedings.

  17. I don’t think that Judge Newman failed to recognize the distinction.

    Quite in fact, I think Judge Newman is saying that any such ‘distinction’ is a distinction without a difference and that the Executive Branch (through the PTO) and the Legislative Branch (through the writing of law for post grant review – which, in fact implicates the whole slew of new post grant review proceedings) cannot change the decision of the court when the parties involved have had three things:

      1) nature of the decision – the ‘what’ of the particular issue already decided
      2) adequacy of the hearing – whether both sides have the opportunity of a vigorous and zealous representation, and
      3) opportunity for review – of the particular issue at hand through the appellate process

    ALL of these conditions were met here. Judge Newman dissects the issues and through a tour de force through EVERY circuit provides examples of how (especially) even a ‘complete’ case not being ‘final,’ a particular issue can – and should be considered final and the matter closed by the Judicial Branch.

    Her point is that once such a particular issue has been adjudicated by the parties, that particular issue cannot be revisited by another Branch of the government, and any action by the Executive Branch to do so, without or even with the ‘blessing’ of law written by the Legislative Branch violates the constitutional doctrine of separation of powers.

    That is the point Judge Newman is making.

    Myself, I have mixed emotions on this. But her reasoning is forceful and does in fact consider Chucksz’ contention.

    She even hits on two elements that will definitely resonate with the Supreme Court:

      1) reference to the Third Circuit’s rejection of a concept of “finality” as being unduly rigid – as the majority attempts to force with a ‘entire case must be final’ view, and
      2) reference to the Fourth Circuit’s stressing of common sense of issue preclusion and collateral estoppel.

    While the fact pattern here is very complex (and the courts are partly to blame for allowing multiple tracks of decisionmaking to run parallel), the point of law that Judge Newman explicates has much more force than the position taken by the majority.

  18. Hey Dennis -

    Your last post [Fresenius v. Baxter: PTO Reexamination Decision Trumps Prior Decisions by both the District Court and the Federal Circuit] was freaking awesome. I have gone ahead and added your stuff to my Feedly account. Please keep me updated if you post anywhere else.

    Keep rocking –

    Jon

  19. There did originally – as the board applied administrative estoppel to prevent – re-litigating validity under the guise of reexamination – giving full faith and credit to the court judgment.

    After Portola packaging was legislatively overturned – and under Dudas – the pto stopped applying administrative estopple.

  20. Inventors and their practitioners will tell you the PTO has lost objectivity and cannot be relied on as an impartial arbiter. Many inventors will tell you the PTO serves large infringing corporations which explains all the rules changes which are to inventors detriment. Therefore, the final responsibility falls on the courts.

    For the truth, please see link to truereform.piausa.org
    link to facebook.com
    link to piausa.wordpress.com
    link to hoover.org
    link to cpip.gmu.edu

  21. Chucksz hit the nail right on the head: PTO determines patentability; courts determine validity. Two different questions with different standards, and someties different answers. A shame the Fed Circuit can’t even get this straight (constantly referring to PTO invalidating claims).

  22. that is a question for someone more legal minded than I am.

    LOL – as is most everything here, 6.

  23. I respect your thoughts on this matter – but let me proffer that you too – are getting intellectually wrapped around the axel. Think about this: It maybe true that congress could go full EU – and make the US patent system a pure Admin action ( the 7th amendment would probably bar this however) and not involve the courts.

    The issue here is the mixed power of the courts and the executive departments – as to who can render final judgment – v. the executive to reconsider that decision. It does not matter the ‘grounds’ of that reconsideration – new evidence, new claims, public policy goals – see nextwave SCOTUS, ability to amend your application, etc, etc, the net effect is the the same – it is in effect reopening a dispositive matter as determined by the Art. III court – whether by direct attack on the evidence ad law – or the indirected attack on the underlying claims that were adjudicated. This is exactly Hayburn’s case

  24. I generally admire Judge Newman’s opinions. However, in this case, by failing to recognize the distinction between the questions of patentability and validity, she, interpreted the PTO action as an administrative agency overruling the court. I think that interpretation is incorrect.

    Hypothetical: A claim at issue in an infringement suit is alleged to be invalid under 102 as being anticipated by A. However, the court finds a clear and unambiguous disclaimer of subject matter in the record such that A fails to anticipate the claim. In later proceedings, the court finds the claim infringed notwithstanding the disclaimed subject matter.

    A copending ex parte reexamination rejects the claim under 112 as being indefinite based on the disclaimer noted by the court. The court did not consider the 112 question.
    The patent owner cannot amend the claim to save validity.

    Two different questions are decided. Both decisions may be correct.

  25. MM, you have to ask yourself why the infringer did not bring to the attention of the court the prior art they relied on in the PTO. Something doesn’t smell right.

    Could it be BRI?

    I havent’ looked at the prior art, but there seems to be something fundamentally wrong with allowing this to happen.

  26. This case begs for certiorari because it is so wrong

    Because “justice” will only be served when Fresenius pays damages on an invalid patent? A patent that should never have been granted in the first place? A patent on an old dialysis machine with its control panel replaced by an old touch-screen?

    If there is an issue here “begging” for the Supremes to address, I’m pretty sure there’s a more, uh, “appealing” set of facts to be found.

  27. “Filing a request for ex parte reexamination is the problem.”

    How is that a problem?

    “The losing infringer should be estopped from doing this and should be enjoined from doing this pending the outcome of the court case.”

    I’m pretty sure that congress said that they don’t agree with your “should”. And in which case it is not the role of the courts to impose that “should”, I don’t think. Though perhaps it is, that is a question for someone more legal minded than I am.

  28. I’m pretty sure that if you don’t have a cause of action then a court can’t decide your case right Ned?

  29. It should be noted for the record that Congress provided for collateral estoppel effect with inter partes proceedings but not for ex parte. That omission needs to be given weight.

  30. Chuckz, also, traditionally, the judgments of administrative agencies have no collateral estoppel effect. One reason is, as you point out, the questions decided are quite different.

    This case begs for certiorari because it is so wrong.

  31. Filing a request for ex parte reexamination is the problem. The losing infringer should be estopped from doing this and should be enjoined from doing this pending the outcome of the court case.

  32. 6, Judgments from ALJs, administrative bodies such as the ITC, even on validity, do not have collateral estoppel effect. That has been the law for a long time. The reason is that people have a right to have their rights adjudicated in court, including in the case of patents, they have a right to a trial by jury on infringement and validity.

    This case gives no consideration to prevailing law.

  33. Great question ned, and one which I cannot begin to answer. I would presume not since there is no final judgement.

  34. LB:

    1. The new or amended claims have no effect on present litigation except if they are identical in scope to existing claims. If they are not identical, a new action must be filed as infringement begins when the new claims issue.

    2. Regarding new infringement cases, the infringers may have intervening rights per 252. These are discretionary.

    3. Regarding cancelled claims, they do not apply to future infringements cases.

    4. Regarding pending cases, the statute does not apply.

    5. However, collateral estoppel might. But I think the general principle is that judgments from ALJs, even if affirmed by the Federal Circuit, do not apply.

    This case turns existing law on it ear. It is amazing in its wrongheadedness.

  35. This is a really bad case for cert. There is a difference between the patentability and validity questions that is being ignored.

    The question of validity is tried under the presumption that the claims at issue are valid. Moreover, the patent owner has no right to amend her claims to distinguish over presented prior art.

    On the other hand, in patentability proceedings, whether pre or post grant, there is no presumption of validity, claim amendments are permitted in many circumstances and the claims are construed under the standard of “broadest reasonable interpretation in view of the specification. That is where the USPTO has it administrative jurisdiction but it has no jurisdiction over validity questions.

    So, yes, it is possible for the USPTO to declare a claim unpatentable notwithstanding a court’s ruling of validity. If you ask two different questions, sometimes you will get two different answers. Bad cases make bad law.

  36. Now, regarding new and amended claims, section 252 intervening rights is equitable and discretionary with respect to existing products or infrastructure. There is no absolute right.

    It’s not discretionary with respect to acts before the new or amended claims.

    So consider two scenarios:

    1) Pending litigation involves claim 1: A widget comprising X+Y. In reexamination, all claims are canceled.

    2) Pending litigation involves claim 1: A widget comprising X+Y. In reexamination, claim 1 is amended to X+Y+Z.

    Under your interpretation, a defendant who makes a widget comprising X+Y+Z is liable for past infringement under the first scenario, but is not liable under the second scenario. That doesn’t make any sense, does it?

  37. LB, it is also consistent with the intent of Congress not to abate existing lawsuits with respect to cancelled claims. Congress frequently passes legislation that preserves existing causes of action.

    I think the failure of Congress to include cancelled claims is fully consistent with their intent not to affect pending litigation.

    Now, regarding new and amended claims, section 252 intervening rights is equitable and discretionary with respect to existing products or infrastructure. There is no absolute right.

  38. I’ll grant you that the statute is not very clear on its face, Ned. But if you take the position that reexamination certificates only invoke Section 252 with respect to new and amended claims then you get the absurd result that a defendant (in a non-final case) gets intervening rights with respect to new and amended claims but is liable for infringing canceled claims. That can’t be what Congress intended.

    In this case, the majority simply says that “the reexamination statute provides that reexamined claims “have the same effect [in pending litigation] as that specified in § 252 of this title for reissued patents.” 35 U.S.C. § 307(b),” without distinguishing between canceled and new/amended claims. I presume that they have previously resolved the question of whether section 252 applies to claims canceled in a reexamination, but I don’t know.

  39. 6, assume for a moment that the patent was held invalid by the Federal Circuit, but the case was on remand to determine an accounting on another patent. In the meantime the patent owner brings a second infringement case against another party on the patent that was held invalid.

    Does collateral estoppel apply?

  40. LB, “The statute (sections 307 and 252) says that any existing cause of action is dead.”

    Huh?

    How do you get that from this:

    (b) Any proposed amended or new claim determined to be patentable and incorporated into a patent following a reexamination proceeding will have the same effect as that specified in section 252 for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation for the same, prior to issuance of a certificate under the provisions of subsection (a) of this section

  41. I agree. It is extremely unfortunate.

    I wonder whether courts would in the future entertain a motion by the patent owner to enjoin the infringer from seeking ex parte re-examination during the pendency of the lawsuit in an aide to protect their jurisdiction and reserve the patentee’s constitutional right to a trial by jury on validity.

  42. Malcolm, what I’m suggesting is that they are not canceled until they are canceled.

    Until they are canceled, they remain in the patent and can be enforced but for collateral estoppel. Collateral estoppel is a matter of equity, not a matter of jurisdiction.

    If, before the claims are canceled, a judgment becomes final, the cancellation of the claim should have no effect whatsoever on the judgment.

  43. If the Supreme Court feels obligated to take a patent case, I would prefer that they take a case like this as opposed to a 101 or 103 (or 102 or 112) case.

  44. Mr. Orn, but what is your view on whether a party losing on validity in a first infringement case can raise validity in a second infringement case involving different products, but the same patent and the same claims?

  45. Inviting, I had the same problem. See my post below at 12:48. This case seems to be widely beyond pale of conventional notions of the effect of collateral estoppel.

  46. “litigating the issue in the patent office ”

    I didn’t even realize that you could litigate things in the PTO. Where do we carry out these contests by judicial process? Is that over in Remson? I thought we were an administrative agency.

  47. Malcolm, regarding "full and fair opportunity" I think one requires that the losing side of an issue have a sufficient stake in the outcome to litigate effectively.

  48. Well, Inviting, I think the cancellation of the claim would have the same effect legally as a statutory disclaimer. You know of any case law on the effect of a statutory disclaimer on existing lawsuits?

  49. Kessler v. Eldred, 206 US 285 – Supreme Court 1907

    Kessler won a judgment against Eldred that his lighter was not infringing. Eldred then sued a Kessler customer. The SC held that Eldred had violated the judgment rights of Kessler equity would enjoin Eldred from proceeding.

    Kessler was relied upon by Hart Steel Co. v. Railroad Supply Co., 244 US 294 – Supreme Court 1917. This case involved actions by the patentee against both a manufacturer and the manufacturer's customer, the former in the Seventh Circuit in the latter in the Sixth. The Court of Appeals in the Sixth Circuit held the claims invalid and not infringed. The manufacturer defendant in the first case moved that the judgment in the second case was a matter res judicata because the manufacturer and customer were in privity with each other, the same products being involved in both cases. Instead of giving credit to the Sixth Circuit judgment, the Seventh Circuit held the patents valid and infringed. On petition, the Supreme Court reversed. They held that the judgment of the Sixth Circuit was res judicata because the same products were involved, i.e., there was privity. Therefore, the Seventh Circuit should have given res judicata effect to the judgment of the Sixth Circuit.

  50. That’s all well and good, but it doesn’t address the actual timeline in this case, where the “affirmation by [the CAFC]” of the “final PTO decision” did not occur until after the final judgment.

    Under the majority’s approach, the District Court’s judgment was not “final” and would not be final, until this decision was rendered. As they put it, “finality” here means that there is nothing left to do but to execute the judgment. That doesn’t happen until the appeal is done.

    Note that Baxter was not arguing in this case that the court’s 2012 judgment was final. Instead, they wanted the 2007 summary judgment to be treated as “final,” since the remand and the subsequent appeal didn’t deal with validity. The court rejected that, saying that the case has to be completely final.

  51. Ned: All that matters is whether the party had a full and fair opportunity to litigate the issue.

    And how is the answer to that question determined, Ned? Do you flip a coin? Consult a gypsy?

  52. IBP, that’s actually a quote from the case (all of Ned’s 10:11 am is a quote from the case).

    I see Ned’s point here. The majority says “the statute requires that a final PTO decision affirmed by this court be given effect in pending infringement cases that are not yet final.” That’s all well and good, but it doesn’t address the actual timeline in this case, where the “affirmation by [the CAFC]” of the “final PTO decision” did not occur until after the final judgment.

    The tension here seems to arise out of a strange set of facts where (1) the claims are j*nk (not that strange, really); (2) the defendant filed a re-exam with art that was not considered at the district court level (presumably because the defendant did not know of the art prior to filing its invalidity contentions?) and (3) the district court judge seemed clueless about obviousness and unable to determine that a stay was appropriate.

  53. What is curious to me, though, is how issue preclusion figures into this. The court is stripped of its jurisdiction? So jurisdiction relies on the presumption of validity attaching? Why does jurisdiction not depend instead on the nature of the issue, and if there has been an adverse finding WRT validity by the PTO, why is not the burden of proving validity shifted to the plaintiff patentee?

    It seems to me that talking about “issue preclusion” and “jurisdiction” needlessly complicates things. The statute (sections 307 and 252) says that any existing cause of action is dead, as of the issuance of the reexamination certificate, with respect to canceled claims or amended claims that are not substantially identical to the original claims. Unless there is a dispute about whether amended claims are “substantially identical,” which there is not in this case, there is no “jurisdiction” because there simply is no cause of action left.

    Notwithstanding all the gnashing of teeth elsewhere in this thread about the unbridled power of the administrative state, Congress chose to give this exact effect to a reexamination. It can choose to change it, if it likes, so I don’t quite see the constitutional crisis that others apparently do.

  54. MM, that is not how collateral estoppel or for that matter, res judicata works. It doesn't make any difference whether new facts are later discovered by a party or non-party. All that matters is whether the party had a full and fair opportunity to litigate the issue. If he did he can no longer litigate that issue again in any court.

    The question is in my mind is whether such an estoppel prevents him from litigating the issue in the patent office in any form. I think it does.

    In fact there is a Supreme Court case on point. I will find it and post it here.

  55. facts that were neither presented nor assumed

    LOL – in other words, YES, anon you are correct, Malcolm added facts and changed the question into a strawman.

    D’Oh! (said in the best Homer Simpson tones)

  56. injecting a different fact patern

    The answer to Ned’s question depends on facts that were neither presented nor assumed by Ned. Ned is free to restrict his hypothetical in any way that he wishes and re-ask his question again.

    Whether collateral estoppel applies to bar a party from litigating an issue is ultimately a question of due process. It’s going to be fact-dependent and I’m not aware of any rule restricting those facts to the names of the parties, the number of the patent, and the infringing product.

  57. One can’t help wondering what if had been the other way, with the PTO determining the patent to be valid and the court determining it to be invalid. Perhaps its not really a case of either PTO or court trumping the other, but of a judgment of invalidity trumping one of validity from whichever tribunal it issues.

  58. Ned: “cancellation extinguishes the underlying basis for suits based on the patent”

    Does it? Consider the timing of the filing of the complaint, and the status of the patent at that point–granted and presumed valid.

    What is the precise effect of an invalidity finding on re-exam? The claims are “canceled” from the existing granted patent? Please refer to NIRC’s and other certificates.

  59. “Good catch”?

    Try some reading comprehension, and it will instead appear as obviously the critical point and, really, the only important one.

    What is curious to me, though, is how issue preclusion figures into this. The court is stripped of its jurisdiction? So jurisdiction relies on the presumption of validity attaching? Why does jurisdiction not depend instead on the nature of the issue, and if there has been an adverse finding WRT validity by the PTO, why is not the burden of proving validity shifted to the plaintiff patentee?

    After all, the patent is a granted patent, and so at one time was considered to have been valid by the PTO–as contrasted to the situation where an application was denied for invalidity, in which case jurisdiction is supported for only review of the PTO and not for infringement.

    Again, I have yet to read the opinion, but am interested in people’s comments.

  60. I really don’t think that is the way collateral estoppel works. It depend on whether the issue was litigated. It does not depend upon whether there are new facts.

    Well, if “the issue” could not have been fully litigated in the first case because the facts were not available to a party, I’m not sure that collateral estoppel applies as to “that issue”.

  61. Guest, you might want to add to these potential delays that the Federal Circuit seems to have waited a very long time issue its opinion here so that it came just after the PTO actually issued its re-examination certificate canceling the Claims. If I understand it correctly, the District Court judgment was final and ready for appeal in March 2012. The claims were not canceled from the patent, in point of fact, until certificate issued and that was a year later. So at the time the claims are canceled, the judgment of the District Court had been final for more than a year.

  62. There also seems to be another problem in that the court seems to equate a final judgment of invalidity as equivalent to cancellation of the claims from the patent – essentially removing subject matter jurisdiction from a court whose proceedings of not yet final. I think that is wrong because it would then make 35 USC §288 superfluous. §288 requires that a patentee disclaim claims that are invalid and if he does not do so there are consequences – namely he can recover no costs in later cases.

    I think the holding that a claim is invalid does not act in rem, removing jurisdiction. In holding that a patent claim is invalid is no more than the basis for collateral estoppel which is an affirmative defense which must be raised by the defendant. In other words, contrary to the discussion of the effect of a prior court decision holding claims invalid as removing jurisdiction, that hardly is the case and must be wrong because it conflicts with the statutes, namely §288.

  63. MM,
     
    But there is no basis for distinguishing between
    the effects of a final, affirmed court decision determining
    invalidity and a final, affirmed PTO decision determining
    invalidity on a pending litigation. The latter is binding
    not because of collateral estoppel, but because Congress
    has expressly delegated reexamination authority to the
    PTO under a statute requiring the PTO to cancel rejected
    claims, and cancellation extinguishes the underlying basis
    for suits based on the patent. …  As discussed above, the statute requires that a final PTO decision affirmed by this court
    be given effect in pending infringement cases that are not
    yet final. Baxter, as a general matter, does not argue
    otherwise…. 
    In light of the cancellation of Baxter’s remaining
    claims, Baxter no longer has a viable cause of action
    against Fresenius.   

     
    Sent from Windows Mail
     

  64. MM, I really don’t think that is the way collateral estoppel works.  It depend on whether the issue was litigated.  It does not depend upon whether there are new facts.

     
    Sent from Windows Mail
     

  65. I can’t parse the question, Ned, as you wrote it with all kinds of wrongness built in.

    LOL

    Pot.
    Kettle.

    Very funny.

  66. So broadest reasonable interpretation overrides actual interpretation?

    Baxter appeals the board to the federal circuit, and then what?

    This is a crazy decision.

  67. Of course this has immense implications for future litigation given the speed of the new AIA post grant reviews.

  68. So the other shoe has dropped. Cert q: Is the patent law a constitutional anomaly, or a triumph of the Administrative state? See Hayburn’s case.

    Looking forward to reading Judge Newman’s opinion, she has been correct on the issue for a while now. There is no question the judicial department is merely advisory and subject to the executive is this holds. And to think people gave their – last full measure of devotion – to protect us from kings.

    We are now, officially, so intellectually wrapped around the axel as to be extra constitution here. Kiss the 7th, 5th and 14th – and patent clause good nite. All hail Agency expertise.

  69. She seems to be of the belief that her decisions are final. As in, even if the case goes back to the court below for a final judgement on some matters, whatever she says in her opinions as to validity is binding on the whole of the government forever (with respect to those parties and that issue at least). Idk it was hard to follow her discussion on the matter. She kind of jumps around it seems like on first reading.

  70. I’m just answering Ned’s question

    No, Malcolm, you are answering a different question AND injecting a different fact patern. That’s called setting up a strawman.

    Do you want me to post the definition for you? I would have though the acclaimed master of English as a first language would have ‘got’ that (with our without your Mommy’s help).

  71. comments about Lemley are stricken..,

    Tr0llboy thinks a comment was stricken because it was critical of Lemley?

    LOL.

  72. I don’t think “different facts’ are a part of the issue being discussed

    Nobody cares what you “think”, Tr0llboy. I’m just answering Ned’s question. If you have a different answer to Ned’s question or if there is an error in my answer, then go ahead and express yourself in plain English. Maybe ask your mommy to help you if that’s too difficult (which seems to be the case 99% of the time).

  73. I don’t think “different facts’ are a part of the issue being discussed.

    Nice strawman though.

  74. LOL – I wish such ‘adjustments’ would take care of your p1sspoor blogging tendencies.

    But the fact that you can openly malign Kappos (and comments about Lemley are stricken…)

    C’est La Vie

  75. That was not what the Federal Circuit held. The PTO proceedings had to be final.

    Had to be final … before what? Can you identify this holding in the present CAFC decision?

  76. Suppose the infringer loses. He then infringes again and is sued again. Can he litigate validity again? Why is he not collaterally estopped?

    Different time => different facts. New art may have been discovered. Patentee may have made arguments in later cases that contradict arguments made in the initial case, requiring a new claim construction. Etc.

  77. 1. Federal Circuit mandate that claims are not invalid 2009

    How does this “mandate” square with Judge Dyk’s statement above that those claims are likely to be found invalid by the PTO?

    remand for proceedings on injunction and ongoing royalties, not infringement.

    So there was no final judgment until March 2012, after the PTO had concluded that the claims were invalid, based on art that had not been presented in District Court.

    Does the appeal by the infringer of issues unrelated to validity, that was a final after the 2009 Federal Circuit decision, rendered the March 2012 final judgment non final?

    I can’t parse the question, Ned, as you wrote it with all kinds of wrongness built in. Validity was appealed from the beginnning. This wasn’t a Lazare Kaplan situation where invalidity wasn’t appealed. The CAFC majority in 2009 recommended that the district court withhold judgment on the remaining claims until the PTO had finished its determinations. There was different art at issue. What’s odd here is that the District Court entered final judgment in spite of the CAFC’s warning and in spite of the USPTO’s finding that the remaining claims were invalid. What was the rush?

  78. “The Federal Circuit did not say that the PTO’s invalidity decisions “trump prior Court Decisions,” but only that the PTO’s invalidity decisions trump non-final court decisions.

    That’s what I was thinking.

  79. No one, so long as the district court judgment is final, what happens later does not affect that judgment.

    What bothers me is that the infringer is not estopped to challenge the validity by requesting reexamination.

    Suppose the infringer loses. He then infringes again and is sued again. Can he litigate validity again? Why is he not collaterally estopped?

  80. I have always thought that patents could be found invalid in any forum at any time, and that if a certain forum finds a patent “not invalid”, it is “not invalid” based on the evidence at hand in that proceeding. New evidence, or even a new look at old evidence, might bring a different result tomorrow. So, this is not a surprising result to me.

  81. The real sequence is this:

    1. Federal Circuit mandate that claims are not invalid 2009, remand for proceedings on injunction and ongoing royalties, not infringement.
    2. District court judgment is final: March 2012.
    3. Federal Circuit mandate affirming PTO: November 2012
    4. Possibly relevant, the April 2013 certificate issuing cancelling the concerned claims.

    Does the appeal by the infringer of issues unrelated to validity, that was a final after the 2009 Federal Circuit decision, rendered the March 2012 final judgment non final? The remand had nothing to do with validity or infringement. The legal part of the case was over.

  82. Suppose a patent was invalidated (or validated) by a Court but was not subject to a Re-Examination by the Patent Office.

    Can the patent owner (or losing Defendant) have the patent Re-Examined now and possibly reverse the Court’s decision?

  83. anon5, agreed. The question is whether a district court judgment is final after it is appealed.

    This IS an interesting nuance.

    I recall, long ago, researching this issue as a part of Moot Court in law school. I wish I could recall what the law is.

  84. MM, “The district court could not enter final judgment in a case where the PTO had concluded that the asserted claims were invalid. Reasonable result.”

    That was not what the Federal Circuit held. The PTO proceedings had to be final. The Court held that they were final when their mandate issued.

  85. How many bytes at the apple are we going to give infringers? Trust me, there’s something wrong in the state of Denmark where infringer can lose in court and still bring later re-examination requests. That may not have been the case here, because I believe the re-examination request was first filed prior to any judgment by the court.

  86. Who talks like this?

    If you’re having trouble with the signal, Tr0llboy, try adjusting the Imputation/Conflation settings on your fillings.

  87. the real district court final judgment was in March 2012 – more than a year before the April 2013 reexamination certificate issued that canceled the relevant claims

    Are you suggesting that invalidated claims aren’t “officially” invalidated until a re-exam certificate issues?

    the PTO Board’s decision was binding on the district court

    Yes. The district court could not enter final judgment in a case where the PTO had concluded that the asserted claims were invalid. Reasonable result.

  88. The majority definitely got it right here. The CAFC declared the patent invalid in In re Baxter, and this appeal was pending when that opinion was released affirming the reexamination result. The PTO presumably waited until after that mandate was final and the date to file a writ of certiorari had passed to actually cancel the claims, though. In any event, this final judgment was on direct appeal, and Supreme Court precedent pretty clearly supports the idea that a final judgment on direct appeal is affected by changes in statutory construction or Constitutional interpretation. Same proposition should apply to a reexamination cancelling the claims as invalid.

  89. By focusing on the 2007 summary judgment decision (and/or the 2009 CAFC decision the dissent cites), the court seems to gloss over the fact that the real district court final judgment was in March 2012 – more than a year before the April 2013 reexamination certificate issued that canceled the relevant claims, and more than 6 months before the CAFC’s November 2012 mandate in In re Baxter which ended the PTO reexamination appeal.

    It seems to me that the question was not whether “cancellation of claims by the PTO is binding in pending district court infringement litigation” but whether it is “binding in pending appeals from district court infringement litigation.” Otherwise, the court seems to be suggesting that the PTO Board’s decision was binding on the district court, despite the patent owner’s appeal to the CAFC.

  90. Judge Newman raises some interesting points.

    What’s the most interesting point she raised?

    Newman says: The court today authorizes the Patent and Trademark Office … to override and void the final judgment of a federal Article III Court of Appeals.

    Except that there was no final judgment entered at the time of the invalidity filing by the PTO in this case. So what is she talking about? I guess it is “interesting” for Newman to write a dissent about an imaginary “authorization” based on a set of imaginary set of facts.

  91. LOL – no. I mean a plausible explanation for the drop to near thirty percent or so from the historical norms of about seventy percent coupled with the known illegal activities of the Office (re Taffas).

    Your answer of “of course not” is likely the same – but the meaning of that answer is most definitely NOT what you would want it to be (because in your ‘world,’ there never was a reason why Kappos had to say his famous line).

    Nice shiny hat, btw.

  92. Those were not valid claims, so I’m glad they were found to be such and it was upheld by the CAFC.

    Still, Judge Newman raises some interesting points.

  93. Dennis: In a case decided today, the Federal Circuit says that the PTO’s invalidity decisions trump prior Court Decisions.

    I get that you’re just trying to do a quick and dirty summary of the case, D, but there is nothing new or controversial about the general proposition that “PTO’s invalidity decisions trump prior Court decision on validity.” While there may be such a thing as a final judgment between two parties and an assessment of damages based on that judgment, it’s long been the case that a patent “found valid” in one proceeding can be invalidated in a separate proceeding where different facts/parties are present.

    I’m pretty sure the public approves of this arrangement. It makes good sense, after all, particularly when the public is more likely now than ever before to be on the receiving end of a patent lawsuit (or a letter threatening the same).

  94. The Federal Circuit did not say that the PTO’s invalidity decisions “trump prior Court Decisions,” but only that the PTO’s invalidity decisions trump non-final court decisions.

    Good catch, LB.

  95. have you come up with a credible explanation for the patent allowance cliff and the mirror mountain climbs in the Office queues of workloads?

    If by “credible”, you mean an explanation that would penetrate the sugary crust surrounding your kool-aid soaked brain then the answer is “of course not.”

  96. However, the Patent Act does not provide guidance for situations where the two political bodies conflict in judgment.

    Huh? Sections 307(b) and 252 of the Patent Act provide explicit guidance for “situations where the two political bodies conflict in judgment.” The only question here was a fairly mundane question of statutory interpretation, which is what courts do.

    An additional complicating factor stems from our Constitutionally mandated national government structure that separates power between the Administration, Congress, and the Courts. In a case decided today, the Federal Circuit says that the PTO’s invalidity decisions trump prior Court Decisions.

    Any complication here is eased by the fact that Congress has the power to specify whether a non-final judgment of a district court takes priority over the administration’s reexamination proceeding. The Federal Circuit did not say that the PTO’s invalidity decisions “trump prior Court Decisions,” but only that the PTO’s invalidity decisions trump non-final court decisions.

  97. LOL – not the least credible – that title belongs to you.

    Or have you come up with a credible explanation for the patent allowance cliff and the mirror mountain climbs in the Office queues of workloads?

    LOL – thought not.

  98. “Quality does not mean Reject.”

    … so said David Kappos, easily the least credible person on the planet when it comes to determining what “patent quality” means.

  99. (shhhhh – if Prof. Crouch makes that post, 6 will have to find another excuse in order to avoid his ‘pet theory’ being scorched to the ground and his lack of understanding of basic inventive concpets like the practice of ladders of abstraction highlighted further)

  100. I guess I will just have to wait for the outcome of any petition for a writ of certiorari.

    “It would be irresponsible to speculate about the obviousness of replacing a meatspace control panel on a device with pre-existing touch-screen technology.”

  101. the USPTO has been exhorted simply to ‘Do your Job’.

    The ‘Job’ is not “just say no,” as in the Dudas era (that did in fact prompt a subsequent director to state: “Quality does not mean Reject.”

    The exhortion stands.

    Understanding that exhortion (obviously) remains a formidable task for many pundits.

  102. But it can’t be a Rule 11 violation because this is a patent case.

    LOL.

    Explain the ‘laughter’

    (Rader wants to know)

  103. I have lost count of the number of times, in these columns, the USPTO has been exhorted simply to “Do your Job”.

    Has it here?

    Me, I don’t know. I guess I will just have to wait for the outcome of any petition for a writ of certiorari.

  104. Sounds like a Rule 11 violation…

    Yes, it does, doesn’t it? But it can’t be a Rule 11 violation because this is a patent case.

    LOL.

  105. t is likely that Baxter will file a petition for writ of certiorari.

    Given these facts (i.e., a j*nk patent that should never have issued in the first place is invalidated before final judgment is entered), why would the Supreme Court bother?

    Put a fork in it.

  106. j*nk, something which Baxter probably was very well aware of during the entire course of this litigation

    Sounds like a Rule 11 violation…

    Malcolm’s pvppet court had handed in its verdict.

  107. In a 2009 decision, the Federal Circuit affirmed a portion of the validity decision – leaving Baxter with a handful of judicially proclaimed valid claims.

    Discussion of that chapter is here:

    link to patentlyo.com

    Judge Dyk in the 2009 case:

    While Fresenius did not establish the invalidity of claims 26–31 of the ’434 patent in the district court proceeding, those claims on their face are of dubious validity in light of our holding that claims 1–3 and 13–16 of the ’131 patent and claim 11 of the ’027 patent are invalid. It is entirely possible that the U.S. Patent and Trademark Office will finally conclude that claims 26–31 of the ’434 patent are also invalid.

    It’s a sign of sickness in our patent system that *any* claims to an old dialysis machine “with a touch-screen interface” actually issued in the first place, then made it past summary judgment. The jury wasn’t fooled but then the district court judge tossed out the verdict in a JMOL (the judge was reversed by the CAFC) … Frenesius was very wise to press forward with the re-exam, given that Judge Armstrong seems to have been confused and or blinded by the dust kicked into his eyes by Baxter’s attorneys.

  108. As Dennis wryly (?) notes, the timing of the PTO’s invalidity finding was “somewhat unfortunate” for Baxter … but very, very fortunate timing for everyone else.

    The claims were invalidated before final judgment was entered. Too bad for Baxter. Their claims turned out to be j*nk, something which Baxter probably was very well aware of during the entire course of this litigation.

  109. Combine this and the Article I case of SAP America, Inc. v. Versata Development Group, Inc., and you have the fourth branch of the government answerable to NO ONE (I would daresay, not even to the Supreme Court).

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