En banc rehearing denied in Baxter case

Judge Newman, dissenting from the denial of rehearing in Baxter, is troubled that the court system could find a patent valid, but then affirm a re-examination ruling of invalidity, all on the SAME evidence.

Newman writes:

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 reex- amination 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). The message has not escaped practitioners, see, e.g., Gregory V. Novak, Concurrent Reexaminations as a Strategic Patent Litiga- tion Defense Tool, Practicing Law Institute Intellectual Property Course Handbook, at 818–23 (Sept–Nov 2010); Wayne B. Paugh, The Betrayal of Patent Reexamination: An Alternative to Litigation, Not a Supplement, 19 Fed. Cir. B.J. 177 (2009–2010).

These departures from the constitutional requirements of judicial authority require attention, for the holding that reexamination can override the finality of final judicial is having enlarged impact.4 The PTO grants most requests for reexamination, see USPTO Reexamination Filing Data – June 30, 2012, http://www.uspto.gov/patents/stats/index.jsp (granting 92% of ex parte and 94% of inter partes reexami- nation requests), and a patent in reexamination carries a “stigma of uncertainty regarding entitlement to the patent,” Bruning v. Hirose, 161 F.3d 681, 685 (Fed. Cir. 1998).

It is time for the court to resolve the concerns and conflicts it has created.