Fresenius v. Baxter—Timing Matters

Abstract

On July 2, 2013, the U.S. Court of Appeals to the Federal Circuit addressed whether a post-issuance determination of patent invalidity by the USPTO can nullify an earlier damages award in district court in Fresenius USA, Inc. v. Baxter International, Inc. (Fresenius II), No. 12-1334 (Fed. Cir. July 2, 2013). The decision is the most recent chapter in the ongoing patent litigation between Fresenius and Baxter over U.S. Patent No. 5,247,434 ("the '434 patent"). In a divided panel decision authored by Judge Dyk, the court answered affirmatively, highlighting the timing of third-party challenges before the USPTO and counterpart stays of litigation in district court. Specifically, where execution of a damages award has not yet occurred and the decision is still pending in some form (in this case, on appeal only with respect to damages), the Federal Circuit's holding tells district courts to "give effect" to the USPTO's invalidity determination.