698 F.3d 1349 (Fed. Cir. 2012), 2011-1073, In re Baxter International, Inc.

Docket Nº:2011-1073.
Citation:698 F.3d 1349, 104 U.S.P.Q.2d 1530
Opinion Judge:PER CURIAM.
Party Name:In re BAXTER INTERNATIONAL, INC.
Attorney:William F. Lee, Wilmer Cutler Pickering Hale and Dorr, LLP, of Boston, MA, filed a combined petition for panel rehearing and rehearing en banc for the appellant. With him on the petition were William G. McElwain, David L. Cavanaugh, Todd C. Zubler, Thomas G. Saunders and Heather M. Petruzzi, of W...
Judge Panel:Before RADER, Chief Judge, NEWMAN, LOURIE, BRYSON, LINN, DYK, PROST, MOORE, O'MALLEY, REYNA, and WALLACH, Circuit Judges. O'MALLEY, Circuit Judge, with whom RADER, Chief Judge, and LINN, Circuit Judge, joins, concurs in the denial of the petition for rehearing en banc. NEWMAN, Circuit Judge, diss...
Case Date:October 26, 2012
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1349

698 F.3d 1349 (Fed. Cir. 2012)

104 U.S.P.Q.2d 1530

In re BAXTER INTERNATIONAL, INC.

No. 2011-1073.

United States Court of Appeals, Federal Circuit.

October 26, 2012

Appeal from the United States Patent and Trademark Office, Board of Patent

Page 1350

Appeals and Interferences in Reexamination No. 90/007,751.

William F. Lee, Wilmer Cutler Pickering Hale and Dorr, LLP, of Boston, MA, filed a combined petition for panel rehearing and rehearing en banc for the appellant. With him on the petition were William G. McElwain, David L. Cavanaugh, Todd C. Zubler, Thomas G. Saunders and Heather M. Petruzzi, of Washington, DC.

Raymond T. Chen, Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Alexandria, VA, filed a response to the petition for appellee. With him on the response were Sydney O. Johnson, Jr. and Scott C. Weidenfeller, Associate Solicitors. Of counsel was Janet A. Gongola, Associate Solicitor.

Before RADER, Chief Judge, NEWMAN, LOURIE, BRYSON, LINN, DYK, PROST, MOORE, O'MALLEY, REYNA, and WALLACH, Circuit Judges.

O'MALLEY, Circuit Judge, with whom RADER, Chief Judge, and LINN, Circuit Judge, joins, concurs in the denial of the petition for rehearing en banc.

NEWMAN, Circuit Judge, dissents from the denial of the petition for rehearing en banc.

ON PETITION FOR PANEL REHEARING AND REHEARING EN BANC

PER CURIAM.

ORDER

A combined petition for panel rehearing and rehearing en banc was filed by Appellant, and a response thereto was invited by the court and filed by Appellee. The petition for rehearing was considered by the panel that heard the appeal, and thereafter the petition for rehearing en banc and the response were referred to the circuit judges who are authorized to request a poll of whether to rehear the appeal en banc. A poll was requested, taken, and failed.

Upon consideration thereof,

IT IS ORDERED THAT:

(1) The petition of Appellant for panel rehearing is denied.

(2) The petition of Appellant for rehearing en banc is denied.

(3) The mandate of the court will issue on November 2, 2012.

O'MALLEY, Circuit Judge, concurring, with whom RADER, Chief Judge, and LINN, Circuit Judge join.

I concur in the denial of the request for rehearing en banc. I do so, however, premised on my understanding that the panel opinion does not, as the dissent claims and the petition for rehearing en banc assumes, endorse " administrative nullification of a final judicial decision." In re Baxter, Int'l Inc., 678 F.3d 1357, 1366 (Fed.Cir.2012) (Newman, J., dissenting). Nothing in this opinion, or in those on which it relies, alters the governing legal principles of res judicata or abandons the concept of finality those principles further.

The majority here concludes— rightly in my view— that a prior court decision in which a party has failed to prove a patent invalid does not bar the Patent and Trademark Office (PTO) from subsequently reexamining that same patent. And, it concludes

Page 1351

that, despite a final court judgment reaching a contrary conclusion as between the patent holder and one alleged infringer, the PTO is free to conclude that the patent is, indeed, invalid. That proposition is an unremarkable one.

In a court proceeding, a patent is not found " valid." A judgment in favor of a patent holder in the face of an invalidity defense or counterclaim merely means that the patent challenger has failed to carry its burden of establishing invalidity by clear and convincing evidence in that particular case— premised on the evidence presented there. See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1429 n. 3 (Fed.Cir.1988). If the PTO later considers the validity of that same patent, it does so based on the evidence before it and under the lesser burden of proof that applies in reexamination proceedings. As the majority notes, Congress granted the PTO the right to act within the realm of its authority. In re Baxter, Int'l Inc. 678 F.3d at 1365.

These conclusions do not mean, however, that, when the PTO does act in the context of a reexamination proceeding, its conclusions can alter the binding effect of a prior judgment in a judicial proceeding. They cannot, and the PTO concedes as much in its response to the petition for rehearing en banc when it states that " [i]f a federal court awards relief to a patent holder against an infringer, a subsequent reexamination decision that the patent is invalid does not disturb the judgment of the court or alter its binding effect on the parties." PTO Response at 14. This concession is consistent with, and dictated by, well-established principles of res judicata. See San Remo Hotel, L.P. v. City & Cnty. of S.F., 545 U.S. 323, 336 n. 16, 125 S.Ct. 2491, 162 L.Ed.2d 315 (2005) (" Under res judicata, a final judgment on the merits of an action precludes the parties or their...

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