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Media Coverage

How They Won It: Fish Nixes $23M Baxter Win With ReExam

August 26, 2013

Media Coverage

How They Won It: Fish Nixes $23M Baxter Win With ReExam

August 26, 2013

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This article first appeared on August 23, 2013 on www.law360.com and is republished with permission from Law360.

Law360, New York (August 23, 2013, 10:24 PM ET) — Fish & Richardson PC attorneys’ prudent decision to seek reexamination of a Baxter International Inc. patent asserted against their client Fresenius USA Inc. culminated in the Federal Circuit’s wiping out a $23.5 million judgment, a ruling that solidifies the importance of post-grant proceedings in patent litigation.

On July 2, the appeals court ruled that a U.S. Patent and Trademark Office decision invalidating a Baxter patent negates a lower court’s earlier infringement judgment against Fresenius because the issue of potential damages was still being litigated.

Baxter claimed the judgment on Fresenius’ liability for infringing its patent was final and that the award should therefore stand. The company has petitioned the Federal Circuit to hear the appeal en banc, arguing that the decision perverts the separation of powers and will “result in a flood of new reexamination requests and duplicative litigation in the [patent office]”.

But if the decision stands, it may encourage more defendants to pursue post-grant proceedings before the USPTO on patents they are accused of violating.

The ruling also signals that post-grant review, such as reexamination, can directly impact the outcome of patent litigation and may lead judges to stay more cases to avoid making rulings that are later negated.

“It represents a bit of a sea change for how patent litigation is going to go,” said Michael Fleming of Miles & Stockbridge PC on Friday.

That Fresenius now has the upper hand on its rival — a decade after the dispute found its way into court — is a testament to the persistence of Fish & Richardson attorneys Michael Florey and Juanita Brooks.

“I think the overarching theme of this case is that tenacity pays off,” Brooks said.

The dispute dates back to 2003, when Fresenius filed a declaratory judgment action in California against Baxter, alleging claims in four patents were invalid. Baxter responded by filing counterclaims for infringement. The case concerned Fresenius’ 2008K hemodialysis machine.

Early on in the case, Fish & Richardson filed an ex parte reexamination request asking the PTO to cancel the claims of Baxter’s patents, a decision that would be paramount to Fresenius’ eventual victory. Read more about how they won it.

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