Baxter Int’l, Inc. v. Fresenius Med. Care Holdings, Inc., No. 08 C 2389, Slip Op. (N.D. Ill. Sep. 25, 2008) (Ashman, Mag. J.)

Judge Ashman granted defendants Fresenius’s motion for a stay pending the Federal Circuit appeal of an earlier case between the parties involving related, but not the same, hemodialysis patents. But the Court denied a stay pending an ex parte reexam of plaintiff’s related patents (the same as in the Federal Circuit appeal) and an inter partes reexam of the patents in suit. The reexam of the related patents had only uncertain and limited benefits to the Northern District. Because the patents under reexam were not the patents in suit, there could be no issue preclusion.  And any potential streamlining of the case the reexam might achieve was outweighed by the reexam’s potential for extreme delay.

The reexam of the patents in suit was filed, as was the stay motion, early in the case. And the inter partes nature of the proceeding guaranteed that it would streamline the case. But the potential benefits were outweighed by the likelihood for extreme delay. The court cited statistics showing that the average inter partes reexam lasts 6.5 years and that they can last as long as ten years. Finally, the Court noted that in the ten year history of inter partes reexam, no case had progressed through every possible level of examination and appeal.

Finally, the Court held that a stay pending the Federal Circuit’s decision on appeal would benefit the case. The Federal Circuit was reviewing a claim term used in the patents in suit. And the Federal Circuit was reviewing obviousness and validity, both issues that could shape this case. And the Federal Circuit decision was expected within months, in early 2009. So, the delay did not outweigh the benefits.