In Re Baxter International, Inc.

assumes, banc endorse “administrative NEWMAN, Circuit Judge, dissents of a nullification decision.” petition from the denial Baxter, In re Int’l banc. rehearing en (Fed.Cir.2012) (Newman, J., dissent-

ing). Nothing in or in opinion, this those relies, on which it the governing alters RE- ON PETITION FOR PANEL legal principles or abandons HEARING AND REHEAR- concept principles those fur- EN ING BANC ther. PER CURIAM. majority rightly here concludes— my view—that a court decision in

ORDER party prove a patent which has failed to petition panel rehearing combined does not bar Patent and invalid Trade- (PTO) by Appel- subsequently rehearing was filed mark Office from re- lant, And, response examining and a patent. thereto was invited it con- or their precludes an action that, a final despite eludes relitigating issues that were privies from contrary conclusion as between reaching a action.”); in that been raised or could have infring- alleged one holder and Allen, 191, 198- Reed v. see also that the er, is free to conclude the PTO L.Ed. 1054 indeed, proposition That is, invalid. patent (“[the] ju doctrine of res well-established one. unremarkable is an of light in the the dicata conceived [was] patent a is proceeding, In a court re that the interest of the state maxim in favor of judgment found “valid.” that there be an end quires —a invalidity an in the face of holder patent common sense comports with maxim which merely means that or counterclaim defense Foster v. Hallco public policy.”); well as as carry has failed to its challenger patent the (Fed. Co., Inc., F.2d 475-76 Mfg. by clear establishing invalidity of burden Cir.1991) (“The principles of law denom that particular convincing evidence embody pol judicata’ public ‘res the inated presented on the evidence premised case— litigation.”). icy putting of an end to Ethicon, Quigg, v. there. fears, premise -and the of The dissent’s (Fed.Cir.1988). If the 1422, 1429 n. 3 un- rehearing en banc are petition the for validity of that the later considers PTO of principles founded. Well-established on the evi- it does so based patent, continuing the re- govern will res bur- under the lesser it and dence before any the lationship between applies ih reexamination proof den of the and will dictate whether proceeding notes, Con- majority theAs proceedings. ruling will have PTO’s reexamination right the to act the PTO granted gress Reassured going on them forward. impact authority. In re realm of its within the fact, I concur in the denial of the by this Baxter, F.3d at 1365. Int’l Inc. 678 rehearing en banc in this mat- request for mean, howev- These conclusions do ter. er, that, the PTO does act in when its proceeding, context of a reexamination NEWMAN, Judge, dissenting binding effect can alter conclusions rehearing for en petition from denial of the judicial proceeding. judgment in a banc. cannot, concedes as and the PTO They petition response banc, much in its rehearing en requests Baxter- when it states that rehearing “[i]f judgment that a final the court holds patent relief to a court awards a federal has no appeal, after trial and this subsequent infringer, against agency holder effect on administrative preclusive is that the decision the same reexamination of the same issue on review judgment of not disturb the effect preclusive invalid does also has no evidence—and binding its effect on judicial court or alter redetermination on our at 14. This con- Thus Response on the same evidence. parties.” PTO same issue with, by, adjudication and dictated initial need is consistent the loser cession judicata. reexamination of principles seek well-established infringed, to be City Cnty. finally adjudged Remo L.P. See San again, authorized to start S.F., n. 125 S.Ct. (2005) (“Under prin- patent. This again encumbering res 2491, 162 L.Ed.2d 315 tenets of critically at odds with the ciple is merits of a final judicial subsequent deter- redetermination of va- repose and conclusiveness Office, lidity the Patent and Trademark mination: and of no effect on the Federal Circuit’s general This rule is demanded subsequent of that review redetermination. object which civil very courts have litigated issues that have been established, which to secure the been finally adjudicated, are decided. society by peace repose set- As the Court reiterated in Marrese capable tlement of matters Academy Orthopaedic American Sur- determination. Its enforcement is es- 373, 390-91, geons, 470 U.S. sential to the maintenance of social or- 1327, (1985), 274 party 84 L.Ed.2d “a is der; judicial for the aid of tribunals precluded asserting from a claim that he would not be invoked for the vindication opportunity’ had a ‘full fair litigate and if, rights person property as in a prior action.” There is no issue in this parties privies, between and their con- information, previously case of unavailable judgments clusiveness did not attend fraud, or or other reason for discard- respect of such tribunals in of all mat- ing adjudication. of the final issue, in properly put actually ters City See San Remo L.P. v. Cnty. by Francisco, determined them. 323, 16, San 336 n. (“Under 2491, 125 S.Ct. 162 L.Ed.2d 315 States, Southern Pac. R.R. v. United 168 res final judgment on the mer- (1897). 1, 49, 18, U.S. 18 42 L.Ed. 355 its precludes action or Nonetheless, their today privies relitigating the Federal Circuit from issues that were or again could have been raised in that departure endorses this from estab action”). in Relitigation guise of inter judicial lished process. and administrative partes reexamination is not liberated from departure directly This confronts the Con these constraints. stitution, “[jjudgments, the pow within ers in Judiciary vested courts Arti My concern principle is with the Constitution, cle may lawfully of the patent reexamination pur- and the useful revised, overturned or refused faith and poses designed; my for which it was con- Department credit another of Govern cern is that inappropriate reexamination is Lines, ment.” Chi. & S. Air Inc. v. Water for redetermination of issues that have 103, 114, Corp., man S.S. 333 been in pro- U.S. 68 S.Ct. determined 431, ceedings. patents 92 L.Ed. I Since valuable respectfully 568 litigated, successful inventions are dissent.1 court has created an additional burden and inventors, disincentive to for reexamina- Discussion tion after a been sustained in The court holds that the Federal Cir cost, court is a multiplier delay, and cuit’s final patent validity, upon decision of uncertainty, negation in prin- direct full trial appeal,2 ciples judicata. is of no effect on my concurring colleague's I take note of Holdings, Fresenius Med. Care v. Baxter inaction, support offering Int’l, Inc., hope SBA, for this No. C 03-1431 2007 WL judicata govern." that "res will res (N.D.Cal. 13, 2007), aff'd, Feb. Fresen judicata govern, did not and the court’s refus- USA, Int’l, Inc., ius Baxter Inc. v. al to reconsider issue assures that res (Fed.Cir.2009). govern. will not technologies, but after the today’s tance of is for an inven here at issue done, prevailing party commercially developed litigation that Baxter rely judgment. on the final entitled to granted was marketing. and is that there be an end policy dictates initiated “Public litigation was in 1993. The that those who have contest- litigation; action. of by declaratory in 2003 Fresenius by the result of ed an issue shall be bound by the district was decided The action contest, and that matters once tried 2007, validity, sustaining patent forever settled as be- shall be considered the Federal Circuit Federated, 2009, parties.” Dep’t validity. tween the sustaining patent decided Moitie, Stores, Inc. v. U.S. request supra. n.2 reexamination 2424, 69 L.Ed.2d and in 2010 101 S.Ct. by Fresenius was filed (quoting Traveling Baldwin v. Men’s Appeals and Interfer the Board of Ass’n, ences, “the is not stating that (1931)). determination,” BPAI L.Ed. by the court’s

bound pat the same issues Op. at decided and the Court leave no Constitution evidence, to con validity the same ent judgments doubt that final are final. Even trary result.3 judgment, if in its that does a court errs finality. deprive the decision of its again in the Federal Cir- Watkins, (2d 792, 101 795 cuit, deferring to the PTO’s Johnson v. this court with Cir.1996) (“the permanent occasional en- “substantially” supported, decision as wrong price of a result is a capsulation our own final deci- refusing recognize to worthy paying promote goals evi- to years earlier on the same worth sion three avoiding ques- ending disputes repetitive is a Although patent validity dence. law, rights, Patent like other com- litigation”). de novo the court declines im- review, property rights, mercial and are not to be bound our refuses judicial prin- this fundamental decision, to mune from and authorizes States, v. United 117 ciple. all a nod to Gordon without overrule 697, 702, correctness, 1864 WL 11666 or res or U.S. finality, or judgments reiterated that of Article Court the Constitution. upon III are “final and conclusive courts systems, and Finality legal is central to rights parties.” “ way every system into ‘has found its Here, are the same in the only from its obvious jurisprudence, In the without and the reexamination. propriety, but because fitness and nation, it days of this was estab it, litiga earliest put an end could never ” “Congress cannot vest review at 336— lished that Remo 545 U.S. tion.’ San Lee, III in of Article courts 37, 125 of the decisions (quoting Hopkins 2491 S.Ct. Wheat.) (6 114, Branch.” Plaut officials of the Executive 5 L.Ed. 218 19 U.S. Farm, Inc., (1821)). 514 Spendthrift into v. U.S. bring who inventions Those 1447, 131 218, 115 L.Ed.2d 328 depend repose on the created S.Ct. commerce (2 Dall.) Case, 2 (citing Haybum’s U.S. Patents are increas judgments. (1792)). The has reinforced these impor- due to the Court ingly litigated, perhaps 2009-006493, (B.P.A.I. 2009-006493, Int'l, Inc., 2010 WL 3032865 parte No. 3. Ex Baxter 18, 2010) (B.P.A.I. 20, 2010) denied). (rehearing Mar. July WL 1048980 Int’l, Inc., parte No. Op."); Baxter Ex {“BPAI Office.”); the Patent and Trademark complexity of the admin- of principles as the (1980) (statement increased, 29,901 Cong. and has Rec. istrative state Hollenbeck) (“As III, safeguards § 1 Rep. pro- that “Article a result of the stressed reexamination, in Branch our con- potential the role of Judicial vision for by barring congressional tripartite system by the Patent flict can be settled Office jurisdiction non- attempts [to ‘to transfer itself in far shorter time and at far smaller purpose III for the tribunals] Article expense challenger to the or to the ” emasculating’ constitutional courts.’ Com- if the holder than would be case modity Trading Futures Comm’n system.”). through recourse was the court Schor, My colleagues state that the Federal (1986) (brackets original, L.Ed.2d 675 justified refusing to be bound omitted). citations by our own final decision of the same issue, in Ar- power as established purporting apply different inseparable ticle III is “an element of the standard of review. va system constitutional of checks and bal- law; lidity question is a law is not Pipeline ances.” N. Constr. Co. v. Mara- subject to deferential determination. See Co., 50, 58, 102 Pipe thon Line Beachcombers, Int’l, Inc. v. WildeWood L.Ed.2d 598 Prods., Inc., Creative exception reexamination is not an (Fed.Cir.1994) (claims interpreted must be pat- constitutional structure. Its review way they the same at the PTO as are entability patent grant, clarifies the but courts). It is time this court to cognizance any intervening not without conflicting precedent, confront its founded litigation. The intent was that a reexami- Products, Standard Havens v. Gen system litigation; nation could avoid Industries, cor 996 F.2d it litiga- could overturn the result of (Fed.Cir. 1993), May WL 172432 where tion. Patent Reexamination: Hearing See “contrary this court held that to the as Comm, on S. 1679 Before the Senate on sumption of the trial the reexamina Judiciary, Cong. 96th 15-16 proceeding ‘would the in control’ (statement Diamond) Sidney of Comm’r fringement suit.” In Id. See also re (Fed. Tech., Inc., Translogic 504 F.3d 1249 Reexamination eliminate or would sim- Tech., Cir.2007); Inc. v. Hita Translogic a

plify significant amount of liti- (Fed.Cir. chi, Ltd., Fed.Appx. cases, gation. some the PTO would 2007). message not escaped prac conclude as result of reexamination titioners, see, Novak, e.g., Gregory V. Con a patent should not have issued. A current Strategic Reexaminations as a validity certain amount of over Tool, Litigation Practicing Patent infringement thus would be com- Defense Law Property Institute Intellectual Course pletely avoided. Handbook, 2010); at (Sepfc-Nov 818-23 also, 30, 364 e.g., Cong. Rec. Wayne Paugh, Betrayal B. (statement (“Reexamination Bayh) of Sen. Litiga Reexamination: An Alternative to challengers would allow holders and tion, Supplement, Not a 19 Fed. Cir. B.J. present delays to avoid the costs and (2009-2010). patent litigation.... Patent reexamination departures will also reduce the burden our over These from the constitutional by drawing requirements judicial authority require worked courts on the expertise holding that reexamina attention, for the adju override

tion can enlarged impact.4 having

dication for reexamina requests most grants

PTO Filing see USPTO

tion, Reexamination http://www.uspto.

Data—June 92% (granting

gov/patents/stats/index.jsp partes inter reex and 94% of parte

of ex in reex requests),

amination uncertainty “stigma carries

amination patent,” entitlement

regarding Hirose, (Fed.

Bruning

Cir.1998). resolve the for the court to

It is time created. conflicts it has

concerns and HIBBARD, Petitioner-

Jennifer

Appellant, AND OF HEALTH

SECRETARY SERVICES, Re-

HUMAN

spondent-Appellee.

No. 2012-5007. Appeals, States Court of

United

Federal Circuit. 2, 2012.

Nov. government, or whether colleague another branch of concurring deems it "unre- My that branch exceeds whatever the action of authorized to over- that the PTO is markable” committed, authority itself a deli- has been ruling decided between turn interpretation, weighty cate exercise in constitutional litigation. Such a parties in responsibility” entrusted casually and is not be so dismissed. matter should Carr, Baker v. meas- courts. "Deciding a matter has in whether 7 L.Ed.2d 663 by the Constitution to committed ure been

Case Details

Case Name: In Re Baxter International, Inc.

Court Name: Court of Appeals for the Federal Circuit

Date Published: Oct 26, 2012

Citation: 698 F.3d 1349

Docket Number: 2011-1073

Court Abbreviation: Fed. Cir.