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IP Alert: Federal Circuit Holds Cancellation of Claims in Reexamination Infringement Claim Moot

July 2, 2013

Today, in Fresenius USA, Inc. v. Baxter International, Inc., a panel of the Court of Appeals for the Federal Circuit held that a reexamination proceeding in the United States Patent and Trademark Office (USPTO) rendered moot a claim for patent infringement. More specifically, the court held that the patent infringement claim was moot even though the issue of patent validity had been decided earlier in the litigation between the parties, and even though the rejection of the validity challenge had been upheld in an earlier appeal.

The only issues remaining in the case were the amount of post-judgment damages and whether the district court should revise an injunction order. Nonetheless, the court held that the dispute remained pending and that it was consistent with the purpose of the reexamination statute to hold that the infringement case was moot.

The panel decision was 2-1. In dissent, Judge Newman asserted that the majority decision violated the Constitutional plan for separation of powers and the final judgment rule.

The Fresenius decision is of significant interest in cases where parties face concurrent infringement litigation and proceedings before the USPTO. Fitch Even attorneys are studying the decision and will provide a more detailed alert shortly.

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