In 2013, inter partes review and covered business method review — two new procedures created by the America Invents Act — fully joined ex parte re-examination as options for challenging validity in the U.S. Patent and Trademark Office. Each offers a profoundly different forum for adjudicating validity compared to U.S. district court. At the same time, many PTO-based challenges proceed in parallel with a related district court litigation, creating the possibility of inconsistent results — a possibility that was realized in two important 2013 decisions: Fresenius USA Inc. v. Baxter International Inc., __ F.3d __ (Fed. Cir. 2013) and Apotex Inc. v. Alcon Pharmaceuticals Ltd., IPR2013-00012 (PTAB Mar. 19, 2013). Both decisions illustrate the complexities that the availability of different tribunals has created, and the challenges that litigants face when executing an enforcement or defensive strategy.
On November 13, 2013, the Patent Trial and Appeal Board (PTAB) issued the first final written decision in an IPR proceeding. The PTAB held that the three claims that were the subject of the trial were unpatentable as obvious over combinations of multiple references. Several aspects of the PTAB’s decision are notable.
July 2, 2013
Boston, MA, July 2, 2013 — Fish & Richardson announced today that it won an appellate decision in a patent infringement case for Fresenius USA, Inc. and Fresenius Medical Care Holdings, Inc. against Baxter International and Baxter Healthcare Corporation regarding a patent for a hemodialysis machine. The U.S. Court of Appeals for the Federal Circuit, in a July 2, 2013 decision, held that federal trial and appellate courts are required by statute to dismiss pending patent cases if the U.S. Patent and Trademark Office (PTO) has cancelled the asserted claims through reexamination.
Fresenius sued Baxter in 2003, seeking a declaratory judgment that it did not infringe any valid claims of certain Baxter patents. Baxter counter-sued for patent infringement. In 2005 Fresenius hired Fish as new counsel for the district court litigation, and Fish quickly filed a request for ex parte reexamination of Baxter’s patents.
ChiMei Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd., slip op. IPR2013-00038 (PTAB Apr. 26, 2013)
May 17, 2013.
Written by Adam Shartzer, Timothy Riffe, Karl Renner, and Dorothy Whelan
In ChiMei Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd., IPR2013-00038, notice-18, Order, Conduct of the Proceeding (April 26, 2013), the PTAB held that a party’s failure to adequately describe an anticipated motion may be grounds for dismissal or exclusion of the motion(s) from the motion list. By adequately describing the purpose and reasons for a motion, the anticipated moving party can provide sufficient notice to the PTAB and non-moving party.