Timing Is Everything

Just last year, the Federal Circuit endorsed the potential for different outcomes in the United States Patent and Trademark Office (“USPTO”) and in district court patent litigation.¹ Short on the heels of that decision, the Federal Circuit has now concluded that, in certain circumstances, a later outcome obtained at the USPTO can override and void a district court’s adjudication of a lawsuit. In Fresenius USA, Inc v Baxter International, Inc,² a spilt panel of the Federal Circuit highlights how significantly a patent holder’s fortune might change depending on the timing and nature of a decision from a district court or the USPTO or, as in the case of patent-holder Baxter, both forums.

1. In re Baxter Int’l, Inc, 678 F.3d 1357 (Fed. Cir. 2012) (“Baxter I”).
2. Nos. 2012-1334, 2012-1335, 2013 US App. LEXIS 13484 (Fed. Cir. Jul. 2, 2013) (“Baxter II”).

Reprinted with permission from Intellectual Property Magazine