A final judgment of the court, after trial and appeal, does not preclude subsequent PTO review of the same patent on reexamination.
Background / Facts: This opinion is a brief order denying Baxter’s combined petition for panel rehearing and rehearing en banc for In re Baxter, Int’l Inc., 678 F.3d 1357, 1366 (Fed. Cir. 2012), which addressed the PTO’s subsequent invalidation of Baxter’s patent following a district court decision refusing to invalidate the same patent.
Issue(s): Whether a court’s final decision of patent validity, upon full trial and appeal, has any effect on subsequent redetermination of patent validity by the PTO.
Holding(s): No. A prior court decision in which a party has failed to prove a patent invalid does not bar the PTO from subsequently reexamining that same patent. 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. This is because 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. 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. (This does 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.)