Fish Wins Federal Circuit Case for Fresenius

  Fish Wins Federal Circuit Case for Fresenius

   Clarifies law on “race to judgment” in concurrent federal court and PTO

Business Wire

BOSTON -- 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.

Fish & Richardson is a global law firm providing strategic counseling and
litigation services to innovative clients who seek to protect and maximize the
value of their intellectual property (IP). Founded in 1878, Fish’s early
clients included Alexander Graham Bell, Thomas Edison and the Wright Brothers.
The firm has more than 400 attorneys and technology specialists practicing IP
strategy and counseling, IP litigation, and commercial litigation. Fish is
consistently singled outfor its superior technical expertise and great
results, and has been named the top patent litigation firm in the country for
nine consecutive years and the number one IP firm for America’s biggest
companies. For more information, follow @fishrichardson on


TW^2 Marketing, Inc.
Teresa Warren
Fish & Richardson
Kelly Largey
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