IP: A matter of deference: Courts and the new AIA post-grant proceedings

The Fresenius decision demonstrates how important it is to use the speedier post-grant proceedings at the USPTO

When drafting the America Invents Act (AIA), Congress hoped to encourage district courts to stay patent infringement cases if one of the new AIA post-grant proceedings was already underway. This would, Congress hoped, shift the task of addressing patent quality back to the U.S. Patent and Trademark Office (USPTO) where it arguably belonged. If a recent Federal Circuit ruling is any guide, this seems to be happening.

In Fresenius USA, Inc. v. Baxter International, Inc., the court held that when a USPTO post-grant proceeding determines that a patent is invalid, the patent owner “no longer has a viable cause of action. . . . Therefore, the pending litigation is moot.” The decision recognizes the curative role of the USPTO post-grant review and the importance of the USPTO acting to correct its own error in issuing the patent in the first place before undue mischief occurs in the court system.

Contributing Author

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Michael R. Fleming

Michael Fleming is a lawyer with Miles & Stockbridge’s Intellectual Property & Technology Practice. He co-leads the firm’s Post-Grant Team and is...

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