Today, Thu., May 17, 2012, in In re Baxter, No. 2011-1073, the Federal Circuit (Newman (dissent), Lourie and Moore) affirmed the Patent Office’s finding patent claims invalid in a reexamination that was provoked by a party who failed to invalidate those claims in a parallel litigation.  This case shows a benefit to a patent challenger seeking reexamination of patents asserted against them in parallel litigation.

The relevant time line is as follows:

2003  –  Patent litigation filed.
2006  –  Ex parte reexamination granted.
2007  –  Jury invalidity verdict overturned and judgment that claims not invalid.
2009  –  Federal Circuit affirms claims not invalid in litigation.
2010  –  Patent Office Board rules claims invalid

The Federal Circuit ruled that the different outcomes between litigation and reexamination was permissible given the different standards between them and, in this case, additional evidence in the reexamination.  The Court cautioned, however, that the outcomes “ideally” would not be different where a patent challenger who fails in litigation (with no further appeal available) provokes a reexamination based on the same arguments and evidence.

Judge Newman dissented because res judicata should preclude different outcomes.