Fish Leverages Ex Parte Reexamination to Win Federal Circuit case for Fresenius

Boston, MA, July 2, 2013 Fish & Richardson announced today that it won an appellate decision in a patent infringement case for Fresenius USA, Inc. and Fresenius Medical Care Holdings, Inc. against Baxter International and Baxter Healthcare Corporation regarding a patent for a hemodialysis machine. The U.S. Court of Appeals for the Federal Circuit, in a July 2, 2013 decision, held that federal trial and appellate courts are required by statute to dismiss pending patent cases if the U.S. Patent and Trademark Office (PTO) has cancelled the asserted claims through reexamination.

Fresenius sued Baxter in 2003, seeking a declaratory judgment that it did not infringe any valid claims of certain Baxter patents. Baxter counter-sued for patent infringement. In 2005 Fresenius hired Fish as new counsel for the district court litigation, and Fish quickly filed a request for ex parte reexamination of Baxter's patents.

In the district court proceedings, a single Baxter patent survived trial and a 2009 appeal sent the case back to district court for further proceedings on damages issues. In the meantime, the PTO invalidated the asserted claims in the remaining patent.

Fresenius appealed from the district court and Baxter appealed from the PTO reexamination. The Federal Circuit heard the reexamination appeal first, affirming the PTO's ruling that invalidated all the asserted patent claims. Fresenius then argued in the other appeal that Baxter's case had to be dismissed because its claims had been cancelled.

In the July 2 ruling, the Federal Circuit agreed, vacated the district court judgment, and remanded with instructions to dismiss the case. The court recognized and gave effect to its prior affirmance of the PTO's cancellation of the asserted claims in the appeal from the Patent Office reexamination, even though the court, in the first appeal from the district court, had held that there was not clear and convincing evidence of invalidity before the jury. It reasoned that once the PTO cancelation of the asserted claims was affirmed, the patent owner no longer had a viable cause of action.

Fish's patent, trial and appellate practices enabled an integrated team of attorneys to seamlessly handle the case from trial through appeal and to initiate the parallel PTO proceedings. The Fish trial team representing Fresenius included Juanita Brooks, Michael Florey and Thomas Melsheimer; the Fish appellate team included Juanita Brooks, Michael Florey and John Dragseth. John Phillips filed the request for reexamination.