July 2013

Looking Ahead

On July 2, 2013, in Fresenius USA, Inc. v. Baxter International, Inc., Nos. 12-1334, -1335 (Fed. Cir. July 2, 2013), the Federal Circuit considered the effect of parallel PTO proceedings on a district court’s subject matter jurisdiction.  The relevant chronology was as follows:  (1) the district court held on SJ that certain patent claims were valid; (2) between the time of that ruling and the time final judgment was entered, the PTO, during reexamination, found the claims invalid and the Board affirmed; (3) the district court then entered final judgment enforcing the claims; and (4) a day later, the Federal Circuit affirmed the PTO’s determination of invalidity.  In the instant appeal, the Federal Circuit explained that, because of the PTO decision, Baxter International, Inc. no longer had a cause of action.  The Court went on to explain that the district court’s SJ ruling does not count as a final decision for res judicata purposes because it did not conclude the case as a whole.  Judge Newman, in a lengthy dissent, explained that the majority ruling amounted to an unconstitutional violation of separation of powers.

Read the full summary in the next edition of Last Month at the Federal Circuit.