We have previously reported on the Federal Circuit’s en banc decision in Therasense, Inc. v. Becton Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) issued on May 25, 2011. In that decision, the Federal Circuit heightened the standard required to show that a patent holder committed inequitable conduct during the prosecution of the patent at issue. Prior to Therasense, an accused infringer asserting inequitable conduct as a defense had to show that the withheld information or false statements were material and the patent applicant intended to deceive the USPTO. Materiality and intent were analyzed on a sliding scale, where intent could be inferred if the withheld information was considered highly material.
Cancellation of Claims by USPTO During Reexam is Binding in Pending District Court Infringement Litigation
Last month, the Federal Circuit addressed the question of “whether, under the reexamination statute, the cancellation of claims by the PTO is binding in pending district court infringement litigation.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 2013 U.S. App. LEXIS 13484, at *13 (Fed. Cir. July 2, 2013). The Federal Circuit interpreted the reexamination statute to have a binding effect on concurrent litigation, and thus terminated a pending litigation where the same patent claims were cancelled during reexamination. Id. at *43. Accordingly here, the Federal Circuit held that the PTO’s invalidity decisions trump the prior district court ruling.
In In re Staats, a Federal Circuit panel including Judges Dyk, O’Malley and Reyna found that the requirement set forth in 35 U.S.C. § 251 for filing broadening reissue application within two years of patent issuance is met once a first broadening reissue application has been filed within that time period, and that subsequently-filed and broadening continuation applications based on the first broadening reissue application need not be filed within the two-year period. In reaching this decision, the Federal Circuit interpreted and affirmed a ruling made by its predessor court, the United States Court of Customs and Patent Appeals (CCPA) in In re Doll.