The U.S. Court of Appeals for the Federal Circuit affirmed-in-part, reversed-in-part and vacated-in-part a district court’s judgment on three of Fresenius’ patents related to a hemodialysis machine integrated with a touch-screen user interface. Fresenius Medical Care Holdings, Inc. v. Baxter Int’l, Inc., Case Nos. 08-1306, -1331 (Fed. Cir., Sept. 10, 2009). (Gajarsa, J.) (Dyk, J. and Newman, J., concurring).

This appeal resulted in the relatively unremarkable finding that some of the claims were infringed and valid even though several similar claims were infringed but invalid. However, the relatedness between the valid and invalid claims sparked two separate concurring opinions concerning the suitability of a stay pending reexamination, an issue never briefed or debated by the parties.

Judge Dyk’s concurrence indicates that he joined the majority opinion based on his understanding that on remand the district court was free to exercise its discretion to issue a stay pending the reexamination proceeding before the U.S. Patent and Trademark Office (USPTO). Specifically, Judge Dyk stated that, “[w]hile Fresenius did not establish the invalidity of [the] claims … in the district court proceeding, those claims on their face are of dubious validity in light of our holding that [certain] claims are invalid. It is entirely possible that the U.S. Patent and Trademark Office will finally conclude that [the] claims [in issue] are also invalid.”

In response, Judge Newman wrote a concurrence to argue that a stay pending reexamination would be inappropriate because there had already been a full trial and appeal and only a modification of the remedy remained on remand (i.e., consideration of an appropriate reasonable royalty). Judge Newman carefully extolled the virtues of reexamination, but at the same time cautioned against its potential for abuse by unsuccessful litigants. Specifically, Judge Newman stated “[a] stay of finality, after the issues of validity and infringement have been litigated and decided by the district court and appealed to the Federal Circuit, is a distortion of the role of reexamination.” Newman continued, “I remain a strong supporter of the principle of reexamination. It can be a useful and powerful tool for the benefit of both patentees and those interested in restricting or eliminating adversely held patents. However, if routinely available to delay the judicial resolution of disputes, the procedure is subject to inequity, if not manipulation and abuse, through the delays that are inherent in PTO activity.”

Practice Note: While Judge Dyk’s and Newman’s concurrences are dicta, they provide useful insights into the leanings of two Federal Circuit judges as well as into the principles the Court will consider in future decisions.