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« Supreme Court Hears Oral Argument in Alice Corp. v. CLS Bank Int'l | Main | Endo Pharmaceuticals Inc. v. Actavis, Inc. & Endo Pharmaceuticals Inc. v. Roxane Laboratories, Inc. (Fed. Cir. 2014) »

April 07, 2014

Comments

"Judge O'Malley noted that "a prior judgment 'cannot be given the effect of extinguishing claims which did not even then exist and which could not possibly have been sued upon in the previous case.'" "

Technically true, but in theory, the patentee could have narrowed its claims to avoid validity issues *before* it sued for infringement. That's a harsh result here, one more akin to what certain European jurisdictions might say, and it's particularly distasteful since O'Malley is right that two bites at the apple isn't necessarily unfair, as defendants now routinely get several bites at the apple. Odd that Newman, who went to town in her dissent in Fresenius, isn't troubled by the asymmetry, but maybe she puts finality of judgment above all else.

The take-home message for plaintiffs is clear: look before you leap. If you're thinking about suing for infringement, get your claims in order before you sue. You don't need to raise a substantial issue of patentability for a narrowing re-issue.

Would the same result have occurred if the second patent with more limited claims had issued as a Continuation application? Another example perhaps where maintaining a pending application on file can become important in conflict proceedings.

I agree with Heebie Jeebies that the take home is to get your claims in order before you file suit. I do wonder, however, whether Senju could not have employed a little procedural chicanery to avoid this outcome.

What if instead of a re-exam, Senju had filed for reissue, and then filed a continuation off of its reissue application (per MPEP 1451)? They could have pulled the original back out of reissue, and pursued the narrower claims in a separate application, which would have resulted in a separate patent. Would that have changed the outcome here, given that Senju would not be suing on the same patent in both suits?

The majority stated that the primary consideration in determining whether the res judicata is at play, is whether the invention in the previous suit is the same, and only secondarily whether the claims are substantially the same. Since the invention is the same, and the claims are narrower in scope, it seems to me that this should end the inquiry.

As to the issue of broader rights, it seems less relevant that a presumption of validity of patent rights after reexamination matters, because at the time of the first suit, the original claims upon which the suit was commenced, were also preemptively valid. Thus, if the dissenting opinion was the rule, it would set a perverse rule, providing the plaintiffs with the second bite at the apple via a lawsuit, as opposed to a defendant which equally gets two bites at the apple, but via two different procedures - a suit and reexamination.

Lastly, the majority opinion should prevail if for no other reason than the consideration of judicial economy. Allowing the plaintiff to narrow the claims during the reexamination proceeding for the purpose of commencing a second suit on the newly presumptive claims which are narrower in scope, on the same invention, would set a perverse precedent.

If there is any unfairness to the plaintiff here, it is that the newly acquired patent rights, with narrower claim scope, may still found to be infringed by the defendant, since the original broader claims scope was found to be infringed in the first suit. And this should be a good argument for the plaintiff, which I am not sure if the dissent noted it (I did not read the opinion).

I also am not sure I agree with HJ's comment, where he says: "the patentee could have narrowed its claims to avoid validity issues *before* it sued for infringement"

The patentee couldn't have known that the patent would be invalidated by the district court.

I am also not entirely sure I agree with the majority on the panel (after reading the opinion). I would have concurred.

Particularly, I disagree with the majority's reasoning that what ultimately matters is whether the claims in the second suit are substantially the same after reexamination as in the first suit, prior to the reexam. If this reasoning is proper, then I would agree with the dissent, in that the 12(b)(6) motion shouldn't have been granted to the defendant, because the plaintiff should have his day in court in determining whether the narrower claims after reexam are in fact substantially the same. I am not sure that there should be such a presumption here, unless the Federal Circuit grounds it in judicial economy.

Instead, I think a more expansive rule, barring any second suits on the same invention after reexam, would be more appropriate, because ultimately the patent infringement suit is about infringement. And if after reexam infringement by the same product/process is logically impossible under any circumstances, then there remains little sense in determining whether the patent claims are substantially the same between prior to and after reexam.

Of course, I realize that my theory above likely runs afoul of a textualist understanding of the claim preclusion doctrine. However, I think from a judicial economy policy perspective, a broader ruling makes more sense than leaving the door open to determining whether the claims are substantially the same or not.

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