In Fresenius, USA Inc. v. Baxter International, Inc., the Federal Circuit interpreted the ex parte reexamination statutes (35 USC §§ 301-307) as providing that the final cancellation of claims in a reexamination proceeding is binding on concurrent litigation proceedings, as long as the litigation is still pending. This decision validates the use of ex parte reexamination to launch a collateral attack on patents in litigation. While many defendants hesitate to bring an ex parte reexamination because of the very limited role they would have in the proceedings, because ex parte reexamination is not limited by the timing requirements of inter partes review and post grant review proceedings, and does not carry the same litigation estoppel, it may be worthy of a second look under appropriate circumstances.
When the Federal Circuit denied the Request for Panel Rehearing and Rehearing en banc in In re Baxter, the court let stand its two decisions that affirmed conflicting rulings on the validity of the same patent. In Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288 (Fed. Cir. 2009), the court affirmed the district court decision that upheld the validity of claims 26-31 of U.S. Patent 5,247,434, while in its May 17, 2012 decision in In re Baxter, the court affirmed the USPTO Board decision that the claims were invalid as obvious. Parallel litigation and USPTO proceedings involving the same patent may become more rare now that the America Invents Act (AIA) has replaced inter partes reexamination with inter partes review and placed restrictions on parallel litigation proceedings, but still could arise from pending inter partes reexamination proceedings or from ex parte reexamination proceedings, which are not subject to the same restrictions.Continue reading this entry
Today’s Federal Register includes the USPTO’s proposed rules to implement the Supplemental Examination provisions of The America Invents Act. I am in London for the C5 Biosimilars Forum, so I have not been able to read the 70 page notice, but the proposed new ex parte reexamination fee caught my eye as I skimmed through: $17,750.
On April 25, 2011, the USPTO published a Notice of Public Meeting to discuss proposed changes to reexamination practice. The proposed changes are the latest in an ongoing and largely successful effort by the USPTO to improve the pace of reexamination proceedings while still maintaining quality. The current proposals are unrelated to patent reform legislation that is pending before Congress.
Although the USPTO has not yet promulgated new rules, it has broadly proposed changes for both ex parte and inter partes reexamination proceedings. Some of the proposed changes would be fairly significant departures from current practice, while some would be relatively minor.
On September 20, 2010, the USPTO issued a “Request for Comments on Incentivizing Humanitarian Technologies and Licensing Through the Intellectual Property System.” The proposal under consideration would offer a “fast-track ex parte reexamination voucher” designed to incentivize technologies “that address humanitarian needs.” At times like these I wish I had more “inside” information so I could understand the forces behind this proposal, but perhaps some of my readers can enlighten me.