Reexam, another bite at the litigation apple?

In a surprising separate opinion, aka. dictum, Judge Dyk noted that a district court could stay a proceeding filed in 2003, tried & decided, and appealed & remanded for reconsideration of the remedy because of a pending reexamination in the PTO (control no. 90/007,751).  FRESENIUS USA, INC. v. BAXTER INTERNATIONAL, INC., slip ops. 2008-1306, -1331 (Fed. Cir. Sep. 10, 2009).  Again, no issues of validity remained on remand. And the main opinion never mentioned a reexamination.

The disputed technology was claimed in US Pat. Nos. 5,247,434, 5,744,027, & 6,284,131 and was described as a prior art dialysis machine coupled to a touch screen display. For procedural reasons, the accused infringer failed to prove to the district court the invalidity of some asserted claims of the ’434 patent, but Judge Dyk’s dictum noted that “those claims on their face are of dubious validity” due to a holding that certain claims in the ’131 and ’027 patents are invalid.  Judge Newman objected to the dictum, urging that a stay would add more delay, including the times for the reexamination and for the patentee to appeal to the CAFC of the PTO’s adverse decision after reexamination.

Clearly, this case illustrates the advantages of filing a parallel reexamination to supplement a defense in litigation.