On Nov. 5, 2013, a divided Court of Appeals for the Federal Circuit declined en banc review of its July 2, 2013, decision in Fresenius USA, Inc. v. Baxter International Inc. (“Fresenius II”). In Fresenius II, the Federal Circuit had ruled that the cancellation of patent claims by the United States Patent and Trademark Office (USPTO) under the USPTO’s statutory reexamination authority must be given effect in pending infringement litigation.
The twelve-member Federal Circuit split 6-4 to deny en banc review, with Judges Raymond Chen and Todd Hughes not participating. Judges Timothy Dyk and Sharon Prost defended the denial of en banc review in a concurring opinion. The dissenting judges provided two separate opinions: one written by Judge Kathleen O’Malley, joined by Judges Randall Rader and Evan Wallach, and one authored by Judge Pauline Newman. Unless the Supreme Court overturns the Federal Circuit, Fresenius II could provide accused infringers a pathway to dislodge a “final” infringement award. This would be done by invalidating the claims at issue, before litigation concludes in district court, through a post-grant proceeding filed at the USPTO.