The following is a guest blog from Ron Schutz of Robins, Kaplan, Miller & Ciresi.
It just got it easier for infringers to use reexamination as a way to wash a judicial patent validity determination right out of their hair. In In re Baxter, a sharply divided panel of the Federal Circuit affirmed a PTO decision invalidating a patent on reexamination. The majority didn’t let itself get tangled up in the fact that PTO reached its ruling after the Federal Circuit had previously affirmed a district court decision upholding the same patent against much of the same art raised by the same party who requested the reexamination. The majority said that differing judicial and PTO proof standards supported the outcome. But a dissenting Judge Newman got truly lathered over the majority’s nullification of a prior Federal Circuit ruling and the potential for endless challenges the decision creates. Our take? En banc reconsideration may be the only way to treat patent law’s latest case of split ends.
The patent at issue in Baxter covered an improved dialysis machine. A competitor of patent holder Baxter International brought a declaratory judgment action in district court seeking to have Baxter’s patent invalidated. As the case approached trial, the competitor also filed a request for reexamination based on much of the same art it was relying on in district court. The case was not stayed, and the district court determined that the competitor had not carried its burden of demonstrating that the patent was invalid by clear and convincing evidence. The Federal Circuit affirmed that decision.