Post-Grant Proceedings and Pending Litigation: Impact of Fresenius v. Baxter

Leveraging PTO Decisions to Nullify or Support Infringement Judgments and Damages

Recording of a 90-minute premium CLE webinar with Q&A

Conducted on Wednesday, September 11, 2013

Recorded event now available

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Course Materials

This CLE course will provide guidance to patent counsel on the circumstances under which PTO decisions can be used to nullify a court judgment. The panel will review the recent Fresenius v. Baxter decision and offer best practices to utilize this decision in challenging or defending patent validity.


Many patents are involved in parallel proceedings — post-grant proceedings before the U.S. PTO and infringement litigation in the courts. What happens when the courts and the PTO do not reach the same determination concerning a patent? There is little guidance when there is a conflict in the judgments.

On July 2, 2013, the Federal Circuit addressed the impact of a USPTO post-grant determination of patent invalidity on a damages award by a district court. In Fresenius v. Baxter, the court clarified what happens when the PTO cancels a claim in a reexamination even after there has been a court judgment.

The potential impact of PTO actions is significant and counsel must understand the importance of the timing of challenges at the PTO in conjunction with infringement litigation and the lessons from Fresenius.

Listen as our authoritative panel examines the Fresenius v. Baxter decision and under what circumstances can a post-grant proceeding nullify a district court infringement judgment. The panel will also review post-issuance review mechanisms and offer best practices for utilizing the Fresenius decision to challenge or defend patent validity.



  1. How to gain a tactical advantage in a district court patent litigation through a post-grant proceeding
  2. Fresenius v. Baxter (Fed. Cir. July 2, 2013)
    1. Majority decision
    2. Judge Newman dissent
    3. When is final really final
  3. Circumstances under which post-grant proceedings nullify court judgment
  4. Best practices for challenging or defending patent validity
    1. Negotiate settlement
    2. Litigation tactics


The panel will review these and other key questions:

  • What lessons can be drawn from Fresenius v. Baxter regarding timing involved in concurrent proceedings?
  • Under what circumstances can a post-grant proceeding nullify a district court infringement judgment?
  • What litigation tactics can counsel employ to challenge or defend patent validity?

Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.


Michael L. Kiklis
Michael L. Kiklis

Oblon Spivak McClelland Maier & Neustadt

Mr. Kiklis focuses on post-grant counseling, patent litigation and patent prosecution. With an extensive...  |  Read More

Scott A. McKeown
Scott A. McKeown

Oblon Spivak McClelland Maier & Neustadt

Mr. McKeown focuses on post-grant counseling, litigation and related prosecution issues. He leads the...  |  Read More

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