  United States Court of Appeals
      for the Federal Circuit
                 ______________________

         FRESENIUS USA, INC., AND
  FRESENIUS MEDICAL CARE HOLDINGS, INC.,
             Plaintiffs-Appellants,

                            v.

      BAXTER INTERNATIONAL, INC., AND
     BAXTER HEALTHCARE CORPORATION,
          Defendants-Cross Appellants.
             ______________________

                    2012-1334, -1335
                 ______________________

   Appeal from the United States District Court for the
Northern District of California in No. 03-CV-1431, Judge
Phyllis J. Hamilton.
                 ______________________

                  Decided: July 2, 2013
                 ______________________

    JUANITA R. BROOKS, Fish & Richardson, P.C., of San
Diego, California, argued for plaintiffs-appellants. With
her on the brief was MICHAEL E. FLOREY, of Minneapolis,
Minnesota.

     MICHAEL J. ABERNATHY, K&L Gates, LLP, of Chicago,
Illinois, argued for defendants-cross appellants. With him
on the brief were SANJAY K. MURTHY and DEVON C.
BEANE; and DAVID A. SIMONS, of Boston, Massachusetts.
2         FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
                  ______________________

    Before NEWMAN, DYK, and PROST, Circuit Judges.
    Opinion for the Court filed by Circuit Judge DYK.
    Dissenting opinion filed by Circuit Judge NEWMAN.
DYK, Circuit Judge.
    Appellants Fresenius USA, Inc. and Fresenius Medi-
cal Care Holdings, Inc. (collectively, “Fresenius”) brought
a declaratory judgment action against Baxter Interna-
tional, Inc., and Baxter Healthcare Corporation (collec-
tively, “Baxter”), alleging, inter alia, that claims 26–31 of
U.S. Patent No. 5,247,434 (“the ’434 patent”) were invalid
and not infringed. Baxter counterclaimed for infringe-
ment. The district court entered judgment against Frese-
nius, finding the specified ’434 claims infringed and not
invalid. On appeal, the parties did not contest infringe-
ment. We affirmed the determination that the claims
were not invalid, but remanded to the district court to
reconsider its injunction and post-verdict damages.
    While the litigation was pending on remand, the
United States Patent and Trademark Office (“PTO”)
completed a reexamination of the ’434 patent and deter-
mined that all asserted claims were invalid. We affirmed
the PTO’s determination in the reexamination proceeding,
and our mandate issued. Meanwhile the district court
entered judgment against Fresenius in the pending
infringement proceedings. Both parties appealed. In
light of the cancellation of the asserted claims of the ’434
patent, and the fact that the infringement suit remains
pending before this court, Fresenius argues that Baxter
no longer has a cause of action. We agree. We according-
ly vacate the district court’s judgment and remand with
instructions to dismiss.
FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.     3
                         BACKGROUND
    The issue in this case is whether the cancellation of
the asserted claims of the ’434 patent by the PTO, pursu-
ant to the agency’s statutory reexamination authority,
must be given effect in this pending infringement litiga-
tion.
    Baxter is the owner of the ’434 patent, which is di-
rected to a hemodialysis machine. Hemodialysis ma-
chines are used in the place of kidneys to cleanse the
blood of toxins. See Fresenius USA, Inc. v. Baxter Int’l,
Inc., 582 F.3d 1288, 1291–92 (Fed. Cir. 2009) (“Fresenius
I”). When a person’s blood is pumped through the ma-
chine, toxins pass from the blood into a solution called
dialysate. The relevant claims of the ’434 patent teach
the use of a dialysis machine with an integrated touch
screen interface. See ’434 patent col. 40 ll. 29–68.
                               I
     In 2003, Fresenius, a manufacturer of hemodialysis
machines, filed suit in the United States District Court
for the Northern District of California seeking declaratory
judgments of invalidity and non-infringement with re-
spect to three 1 Baxter patents, including claims 26–31 of
the ’434 patent, as well as claims of U.S. Patent No.
5,744,027 (“the ’027 patent”) and U.S. Patent No.
6,284,131 (“the ’131 patent”). Fresenius Med. Care Hold-
ings, Inc. v. Baxter Int’l, Inc., No. 03-CV-1431, 2007 WL
518804, at *1 (N.D. Cal. Feb. 13, 2007). Baxter counter-
claimed for infringement. Id. Following claim construc-


   1    The original complaint included two additional
Baxter patents, U.S. Patent No. 5,326,476 (“the ’476
patent”) and U.S. Patent No. 5,486,286 (“the ’286 patent”).
The Court dismissed all claims concerning the ’286 patent
in 2006. Baxter dismissed the ’476 patent claims from the
suit prior to the damages trial.
4         FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
tion, Fresenius stipulated to infringement of the ’434
patent’s claims, but asserted that the claims were invalid.
Id. at *2. A jury returned a verdict in Fresenius’ favor,
finding the relevant claims of the ’434 patent invalid, and
also finding certain claims of the ’027 and ’131 patents
invalid. Id.
    However, in February of 2007 the district court grant-
ed Baxter’s motion for judgment as a matter of law
(“JMOL”), finding that Fresenius had presented insuffi-
cient evidence to support the jury’s invalidity verdict, and
that Fresenius had therefore not proven that the claims of
the patents were invalid. Id. at *2, *8–13. In October of
2007, the district court proceeded to a jury trial on dam-
ages. The jury awarded $14.266 million to Baxter for
infringement of the three asserted patents. In April of
2008, the district court entered a permanent injunction,
which it stayed, and awarded Baxter ongoing post-verdict
royalties on infringing machines and related disposables
sold by Fresenius. Both parties appealed to this court. 2
    On September 10, 2009, we reversed-in-part, af-
firmed-in-part, vacated-in-part, and remanded. Fresenius
I, 582 F.3d at 1304. We held that the asserted claims of
the ’027 patent and the ’131 patent were invalid, revers-
ing the district court’s JMOL decision as to those patents.
Id. at 1296–1302. However, we agreed that as a matter of
law, Fresenius had failed to present sufficient evidence
showing that claims 26–31 of the ’434 patent would have
been obvious. Id. at 1302. These claims required a
“means for delivering the dialysate to a dialysate com-


    2   Fresenius appealed certain of the district court’s
claim constructions, its grant of JMOL of invalidity, the
entry of the permanent injunction, and the royalty award.
Baxter cross-appealed the jury’s verdict that the claims of
the ’027 patent, not relevant here, were anticipated.
Fresenius I, 582 F.3d at 1294.
FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.          5
partment of a hemodialyzer,” ’434 patent col. 40 ll. 33–35,
and Fresenius “failed to present any evidence—let alone
substantial evidence—that the structure corresponding to
the means for delivering dialysate limitation, or an equiv-
alent thereof, existed in the prior art.” Fresenius I, 582
F.3d at 1299. We further held that Fresenius failed to
present evidence that a structure required by dependent
claim 30, a “means for delivering an anticoagulant to a
patient,” existed in the prior art references. Id. at 1300.
     We therefore affirmed the district court’s grant of
JMOL with respect to the claims of the ’434 patent,
reversed with respect to the other two patents, and vacat-
ed the district court’s injunction and royalty awards. Id.
at 1302. We “remand[ed] for the district court to revise or
reconsider the injunction in light of our reversal of the
district court’s grant of JMOL regarding the ’027 and ’131
patents,” and “to consider whether the previous [royalty]
award [wa]s proper in light of this court’s modification of
the district court’s judgment.” Id. at 1303. We noted that,
“[i]n particular, . . . our decision . . . may [have] affect[ed]
how the district court weighs [the relevant] factors” in
determining the royalty award. Id.
    On remand, Baxter moved for a final decision on the
permanent injunction and ongoing royalty. Fresenius
responded that no injunction should issue because it was
no longer selling infringing machines, and that the
amount of the post-verdict ongoing royalties was unrea-
sonable. Fresenius also sought a new trial for pre-verdict
damages for infringement of the ’434 patent. In May of
2011, the district court denied Fresenius’ motion for a
new pre-verdict damages trial. See Fresenius USA, Inc. v.
Baxter Int’l, Inc., No. 03-CV-1431, 2011 WL 2160609
(N.D. Cal. May 26, 2011). The district court scheduled
further proceedings on the post-verdict royalties, and held
an evidentiary hearing in December of 2011. The perma-
nent injunction was no longer an issue at this point
because the ’434 patent had expired in April of 2011.
6         FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
    On March 8, 2012, the district court awarded Baxter
post-verdict damages at a reduced royalty rate. See
Fresenius USA, Inc. v. Baxter Int’l, Inc., No. 03-CV-1431,
2012 WL 761712, at *14–16 (N.D. Cal. Mar. 8, 2012). One
week later, on March 16, 2012, the district court entered
final judgment for Baxter. J.A. 66–67. The district court
ordered Fresenius to pay Baxter $14.266 million plus
interest in pre-judgment damages (based on the original
jury award), $9.3 million plus interest in post-verdict
royalties on infringing machines, additional royalties on
related disposables sold prior to the expiration of the ’434
patent, and costs. Fresenius appealed, arguing that a
new pre-verdict damages trial was required, while Baxter
cross-appealed the district court’s reduction of the post-
verdict royalties. On May 3, 2012, the district court
granted Fresenius’ motion to stay execution of the new
judgment pending this appeal. In granting Fresenius’
motion to stay, the court rejected the argument that
Baxter was entitled to enforce and execute on the 2007
judgment. The district court explained that “the March
16, 2012 final judgment appears to supercede [sic] the
Nov. 7, 2007[,] final judgment.” J.A. 995.
                             II
    We now turn to the PTO reexamination proceedings.
In 2005, while the district court litigation was pending,
Fresenius requested ex parte reexamination of claims 26–
31 of the ’434 patent, which, as noted, are the only claims
remaining in the pending infringement litigation. See In
re Baxter Int’l, Inc., 678 F.3d 1357, 1360 (Fed. Cir. 2012),
reh’g en banc denied, 698 F.3d 1349 (Fed. Cir. 2012).
    In January of 2006, the PTO agreed that a substantial
new question of patentability had been raised in light of
new prior art, and granted the request for reexamination.
The reexamination proceeded in parallel with the district
court litigation. In December 2006, less than a year
before the damages trial, the PTO examiner reached an
FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.        7
initial determination that the claims would have been
obvious. In December of 2007, the PTO examiner reached
a final determination rejecting claims 26–31 of the ’434
patent. The examiner concluded, inter alia, that all
structures required by claim 26, including the “means for
delivering the dialysate,” were present in the prior art,
and that the claim would have been obvious. See Ex parte
Baxter Int’l, Inc., No. 2009-006493, 2010 WL 1048980, at
*5–6, *8–9, *14 (B.P.A.I. Mar. 18, 2010). The examiner
reached this conclusion by relying in part on Lichtenstein,
a reference that was not before the PTO during the initial
examination. 3 The examiner also determined that claim
30 would have been obvious over a combination of refer-
ences including Lichtenstein and Thompson. Like Lich-
tenstein, Thompson was not before the PTO during the
initial examination. Ex parte Baxter, 2010 WL 1048980,
at *15, *17. Thus, as we stated in In re Baxter, “in this
case, the patent examiner relied on new prior art that had
not been raised [in the initial examination or] in the prior
district court proceeding.” 678 F.3d at 1365. 4


    3     For example, the examiner concluded that “it
would have been prima facie obvious . . . to have modified
the . . . dialysis machine of Lichtenstein, to utilize a touch
screen . . . for delivery of treated or treatment fluids to a
patient,” and found that “Lichtenstein further evidences
that the [prior art machines] are standard variations” on
medical devices of the claimed type. Final Office Action in
Ex Parte Reexamination, U.S. Pat. No. 5,247,434 (P.T.O.
Dec. 14, 2007), at 8, 9.
    4    Lichtenstein was not presented to the district
court in relation to claim 26’s “means for delivering dialy-
sate,” and the district court’s analysis of claim 26 did not
discuss Lichtenstein. See Fresenius, 2007 WL 518804, at
*7–8. Thompson was apparently never presented to the
district court at all.
8         FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
     In March of 2010, the Board of Patent Appeals and
Interferences affirmed the examiner’s determination that
the relevant claims would have been obvious in light of
prior art overlooked in the initial examination, including
Lichtenstein and Thompson. See Ex parte Baxter, 2010
WL 1048980. Baxter challenged the examiner’s analysis
of the prior art, but as the Board noted, Baxter never
argued in the reexamination proceeding that Lichtenstein
failed to teach the “means for delivering the dialysate”
required by claim 26, id. at *14, nor that Thompson failed
to teach claim 30’s “means for delivering an anticoagu-
lant,” id. at *15, even though those were the very ele-
ments of the claims that Baxter had successfully argued
were missing from the prior art in the district court
infringement litigation.
     After the Board denied rehearing, Baxter appealed to
this court. We affirmed the PTO’s determination that the
rejected claims would have been obvious over the prior
art. See In re Baxter, 678 F.3d at 1366. We explained
that this determination was not inconsistent with our
holding in the infringement litigation because, unlike the
district court in the infringement litigation, the examiner
“sufficiently identified the corresponding structure recited
in [claim 26 of] the ’434 patent,” i.e., the means for deliv-
ering the dialysate, and could “identif[y] the structures in
the prior art” that would have rendered the asserted
claims unpatentable. Id. at 1364–65. Furthermore, the
examiner “based [the] rejections on prior art references
that were not squarely at issue during the trial on the
invalidity issues, such as Lichtenstein and Thompson.”
Id. at 1365. Rehearing en banc was denied, In re Baxter
Int’l, Inc., 698 F.3d 1349 (Fed. Cir. 2012), our mandate
issued on November 2, 2012, and Baxter did not petition
for certiorari. The PTO terminated the reexamination
and issued a certificate cancelling claims 26–31 of the ’434
patent. See Ex Parte Reexamination Certificate, U.S. Pat.
No. 5,247,434 C1 (P.T.O. Apr. 30, 2013).
FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.        9
                              III
     At various points in the district court infringement lit-
igation, the district court declined to stay the litigation
pending the PTO reexamination. In June of 2007, the
district court recognized the potential impact of the PTO
proceedings on the infringement suit, acknowledging
“that the PTO has already made initial, non-final deter-
minations that the subject claims in the patents-in-suit
are invalid,” J.A. 1015, and stating that “if all the claims
are invalidated, as the PTO’s initial non-final determina-
tions might imply, there will be no issues to try,” J.A.
1012. However, the district court concluded that “it is
also possible that the PTO’s [initial] determination will
have no ultimate bearing on the damages determination
in this case, as the PTO’s initial actions were non-final
and non-binding, and the PTO is free to reconsider its
initial determinations.” Id. Because it was possible that
the examiner’s determination would change by the time it
became final, the district court denied a stay. J.A. 1015.
In 2011, the district court again denied a stay, for similar
reasons. See Fresenius, 2011 WL 2160609, at *1 (“[T]he
effect on this litigation of any final action on the reex-
amined ’434 patent is far from clear.”).
     The issue became central when the district court en-
tered final judgment for Baxter on March 16, 2012, while
Baxter’s appeal of the PTO’s reexamination decision was
pending before us. On May 17, 2012, we affirmed the
PTO’s rejection of the ’434 patent’s claims in In re Baxter.
In the present appeal, the parties dispute the effect of the
PTO’s cancellation of those claims on the infringement
litigation, as well as issues related to damages.
    We have jurisdiction under 28 U.S.C. § 1295(a)(1).
                          DISCUSSION
   As noted earlier, the question in this case is whether,
under the reexamination statute, the cancellation of
10         FRESENIUS USA, INC.    v. BAXTER INTERNATIONAL, INC.
claims by the PTO is binding in pending district court
infringement litigation.
                              I
     To understand the scope of the relatively recent statu-
tory grant of reexamination authority, it is useful to first
review the history and scope of the PTO’s reissue authori-
ty. This is so because the reexamination statute provides
that reexamined claims “have the same effect [in pending
litigation] as that specified in § 252 of this title for reis-
sued patents.” 35 U.S.C. § 307(b).
      The reissue statute, originally enacted in 1832, codi-
fied the Supreme Court’s holding that even in the absence
of a statutory provision authorizing reissue, where an
innocent mistake had been made in granting a patent,
“[a]ll would admit that a new patent, correcting the error,
. . . ought to be issued.” Grant v. Raymond, 31 U.S. 218,
242 (1832). In the course of the reissue proceeding, “the
Patent Office [i]s authorized to deal with all [the patent’s]
claims . . . and might declare them to be invalid.”
McCormick Harvesting Mach. Co. v. C. Aultman & Co.,
169 U.S. 606, 612 (1898). The patentee was required to
surrender the original patent in order to obtain a reissued
patent, and the original patent became inoperative. 5
    Prior to 1928, reissuance of a patent extinguished all
pending claims based on that patent, because the original
patent was “thereby canceled in law.” See II Anthony W.


     5   The first version of the reissue statute provided
that an original patent was surrendered and canceled
upon application for reissue. See generally McCormick,
169 U.S. 606. The statute was revised in 1870 to provide
that surrender and cancellation took place upon comple-
tion of the reissue proceeding. See id. at 610–12 (holding
that if a reissue application is rejected or abandoned, the
original claims are not extinguished).
FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.         11
Deller, Walker on Patents § 319 (1937). Supreme Court
decisions construing the reissue statute “uniformly held
that if a reissue is granted, the patentee has no rights
except such as grow out of the reissued patent. He has
none under the original. That is extinguished.” Peck v.
Collins, 103 U.S. 660, 664 (1880). Moreover, it was well-
established that when a claim was canceled pursuant to
reissue, pending suits based on that claim fell. Moffitt v.
Garr, 66 U.S. 273, 283 (1861). As explained in Moffitt,
   in case of a surrender and reissue, . . . the pending
   suits fall with the surrender. A surrender of the
   patent to the Commissioner within the sense of
   the provision, means an act which, in judgment of
   law, extinguishes the patent. It is a legal cancel-
   lation of it, and hence can no more be the founda-
   tion for the assertion of a right after the
   surrender, than could an act of Congress which
   has been repealed. It has frequently been deter-
   mined that suits pending, which rest upon an act
   of Congress, fall with the repeal of it. The reissue
   of the patent has no connection with or bearing
   upon antecedent suits; it has as to subsequent
   suits. The antecedent suits depend upon the pa-
   tent existing at the time they were commenced, and
   unless it exists, and is in force at the time of trial
   and judgment, the suits fail.
Id. (emphasis added). 6 Thus, under the pre-1928 statute,
“[t]he grant of a reissue extinguished all causes of action

   6    The Supreme Court repeatedly applied the Moffitt
rule after the 1870 statutory amendment mentioned in
note 5, supra. See Allen v. Culp, 166 U.S. 501, 505 (1897)
(holding that the original patent “becomes inoperative” on
reissue); Reedy v. Scott, 90 U.S. 352, 364 (1874) (“[T]he
effect of the surrender is to extinguish the patent, and
hence it can no more be the foundation for the assertion of
a right than can a legislative act which has been repealed
12         FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
which had arisen under the original patent.” P.J. Federi-
co, Intervening Rights in Patent Reissues, 30 Geo. Wash.
L. Rev. 603, 604–05 (1962); see also Abercrombie & Fitch
Co. v. Baldwin, 245 U.S. 198, 209–10 (1917) (upon reis-
suance, a “patentee los[t] all in the way of an accounting
under the original patent”); II Anthony W. Deller, Walker
on Patents § 319 (1937) (stating that, prior to 1928, “no
damages or profits could ordinarily be recovered, for any
infringement of a surrendered patent committed prior to
its cancellation”).
    In 1928, Congress crafted an exception to the rule
that “all rights [a patentee] had in and under the original
patent are forfeited ab initio upon the grant of the reis-
sue.” S. Rep. No. 70-567, at 1 (1928). Congress amended
the reissue statute to authorize actions for infringement
of the original claims to continue after reissue, but only
“to the extent that [the reissued patent’s] claims are
substantially identical with the original patent.” See Pub.
L. No. 501, 45 Stat. 732, 732 (codified at 35 U.S.C. § 64



without any saving clause of pending actions.”). In Meyer
v. Pritchard, 131 U.S. App’x CCIX (1877), the Supreme
Court held that the cancellation of a patent mooted the
appeal:
     [s]ince the appeal in this case, the appellants . . .
     have surrendered the patent upon which the suit
     was brought . . . . If we should hear the case and
     reverse the decree below, we could not decree af-
     firmative relief to the appellants . . . because the
     patent upon which their rights depend has been
     cancelled. There is no longer any “real or sub-
     stantial controversy between those who appear as
     parties to the suit” upon the issues which have
     been joined, and for that reason the appeal is dis-
     missed.
FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.        13
(1928)). The Senate Report accompanying the 1928
amendment explained that this change was meant
   simply to correct an almost unbelievable and in-
   equitable situation. Under the present law if a
   patentee applies for a reissue, no matter for what
   purpose, all rights he had in and under the origi-
   nal patent are forfeited ab initio upon the grant of
   the reissue.
S. Rep. No. 70-567, at 1 (1928); see also H.R. Rep. No. 70-
1435, at 1–2 (1928) (similar).
    As a result of the 1928 amendment, the reissue stat-
ute now states in relevant part,
   every reissued patent shall have the same effect
   and operation in law, on the trial of actions for
   causes thereafter arising, as if the same had been
   originally granted in such amended form, but in
   so far as the claims of the original and reissued
   patents are substantially identical, such surrender
   shall not affect any action then pending nor abate
   any cause of action then existing, and the reissued
   patent, to the extent that its claims are substan-
   tially identical with the original patent, shall con-
   stitute a continuation thereof and have effect
   continuously from the date of the original patent.
35 U.S.C. § 252 (emphasis added). Thus, while
   [p]rior to 1928 one could not recover for past in-
   fringement of a reissued patent, even if the claims
   were unchanged. . . . the 1928 amendment ex-
   pressly overruled this interpretation, and author-
   ized the reissue of patents to correct errors while
   enabling recovery for past infringement of claims
   “identical” to those in the original patent.
Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113,
1115 (Fed. Cir. 1987).
14        FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
    But the 1928 amendment did nothing to change the
rule that suits based on cancelled claims must be dis-
missed. Upon reissue, original claims that are not reis-
sued in identical form became unenforceable.            See
Kaufman Co. v. Lantech, Inc., 807 F.2d 970, 976 (Fed. Cir.
1986) (“[T]he patentee has no rights [in a non-identical
claim] to enforce before the date of reissue because the
original patent was surrendered and is dead.”); Seattle
Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818,
827 (Fed. Cir. 1984) (“The statute does not allow the
claims of the original patent some other form of survival.
The original claims are dead.”).          It follows that
“[s]urrender of the original patent does not affect any
pending action or abate any cause of action to the extent,
but only to the extent, that the claims of the original and
reissue patents are identical.” 4A Donald S. Chisum,
Chisum on Patents § 15.05 (2013) (emphasis added).
                            II
    Under the reissue statute, the PTO “had no power to
revoke, cancel, or annul” a previously issued patent
unless a reissue proceeding had been initiated by the
patentee. McCormick, 169 U.S. at 612; see also Patlex
Corp. v. Mossinghoff, 758 F.2d 594, 601 (Fed. Cir. 1985).
In 1980, Congress authorized ex parte reexamination to
address this deficiency in the reissue statute. See Patent
Act of 1980, Pub. L. No. 96-517, 94 Stat. 3015 (1980)
(codified as amended at 35 U.S.C. §§ 301–307). Like
reissuance, ex parte reexamination is a curative proceed-
ing meant to correct or eliminate erroneously granted
patents. See In re Etter, 756 F.2d 852, 858 (Fed. Cir.
1985) (en banc); see also In re Freeman, 30 F.3d 1459,
1468 (Fed. Cir. 1994). Congress subsequently enacted
additional provisions authorizing the PTO to conduct
inter partes reexaminations, and more recently, inter
partes review. See Abbott Labs. v. Cordis Corp., 710 F.3d
1318, 1325 (Fed. Cir. 2013) (discussing inter partes reex-
amination and inter partes review); Leahy-Smith America
FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.      15
Invents Act (“AIA”), Pub. L. No. 112-29, § 6(a), 125 Stat.
284, 299–304 (2011) (to be codified at 35 U.S.C. §§ 311–
319).
    The reexamination statute thus authorized the PTO
to reconsider patents of “doubtful” validity, and to cancel
“defectively examined and therefore erroneously granted
patent[s].” Patlex, 758 F.2d at 602, 604; see also In re
Swanson, 540 F.3d 1368, 1378 (Fed. Cir. 2008) (describing
“Congress’ purpose of allowing for a reexamination proce-
dure to correct examiner errors”).
    When a claim is determined to be invalid in reexami-
nation, the reexamination statute requires the Director of
the PTO to cancel a claim that is “finally determined to be
unpatentable”:
   In a reexamination proceeding under this chapter,
   when the time for appeal has expired or any ap-
   peal proceeding has terminated, the Director will
   issue and publish a certificate canceling any claim
   of the patent finally determined to be unpatenta-
   ble, confirming any claim of the patent deter-
   mined to be patentable, and incorporating in the
   patent any proposed amended or new claim de-
   termined to be patentable.
35 U.S.C. § 307(a) (emphasis added); see also 35 U.S.C.
§ 306 (providing patentees with appeal rights from any
PTO reexamination “decision adverse to the patentability”
of one or more claims).
    Even if the claim is amended during reexamination to
render the claim valid, no suit can be maintained for the
period prior to the validating amendment. To ensure that
“a person practicing a patented invention would not be
considered an infringer for the period between issuance of
an invalid patent and its conversion through reexamina-
tion to a valid patent,” H.R. Rep. No. 96-1307, at 8 (1980),
Congress made section 252, which limits the enforcement
16         FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
of reissued claims, applicable to reexamined claims. See
id. It did so by enacting section 307(b) of the reexamina-
tion statute, which provides that
     [a]ny proposed amended or new claim determined
     to be patentable and incorporated into a patent
     following a reexamination proceeding will have
     the same effect as that specified in section 252 [35
     U.S.C. § 252] for reissued patents on the right of
     any person who [infringed] anything patented by
     such proposed amended or new claim, . . . prior to
     issuance of a [reexamination] certificate.
35 U.S.C. § 307(b) (emphasis added).
    We have accordingly many times held that the reex-
amination statute restricts a patentee’s ability to enforce
the patent’s original claims to those claims that survive
reexamination in “identical” form. See, e.g., Bloom Eng’g
Co. v. N. Am. Mfg. Co., 129 F.3d 1247, 1250 (Fed. Cir.
1997) (“Unless a claim granted or confirmed upon reexam-
ination is identical to an original claim, the patent can not
be enforced against infringing activity that occurred
before issuance of the reexamination certificate.”); Ten-
nant Co. v. Hako Minuteman, Inc., 878 F.2d 1413, 1417
(Fed. Cir. 1989) (similar); Fortel Corp. v. Phone-Mate, Inc.,
825 F.2d 1577, 1581 (Fed. Cir. 1987) (similar).
    As with the reissue statute, the language and legisla-
tive history of the reexamination statute show that Con-
gress expected reexamination to take place concurrent
with litigation, and that cancellation of claims during
reexamination would be binding in concurrent infringe-
ment litigation. 7 In Slip Track Systems, Inc. v. Metal

     7  See generally Mark D. Janis, Rethinking Reexam-
ination: Toward a Viable Administrative Revocation
System for U.S. Patent Law, 11 Harv. J.L. & Tech. 1, 82
(1997) (“[A] final decision in a reexamination striking
down claims binds courts in pending and future litiga-
FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.        17
Lite, Inc., for example, we concluded that the cancellation
of claims during reexamination would preclude mainte-
nance of a stayed interference suit involving the same
claims. 159 F.3d 1337 (Fed. Cir. 1998). We explained
that
    the reexamination, if carried to completion, is
    likely to result in the cancellation of all of the
    claims of [Slip Track’s] patent [over the interfer-
    ing patent]. That in turn will require a dismissal
    of the interfering patents suit, since a necessary
    condition for such an action is the existence of two
    valid and interfering patents.
Id. at 1340 (emphasis added). Likewise, in a stayed
infringement proceeding, “if the [patentee’s] claims were
canceled in the reexamination, [it] would eliminate the
need to try the infringement issue.” Id. at 1342. In either
situation, “a necessary condition for such an action is the
existence of [a] valid . . . patent[].” Id. at 1340; see also
Gould v. Control Laser Corp., 705 F.2d 1340, 1342 (Fed.
Cir. 1983) (noting that “[o]ne purpose of the reexamina-
tion procedure is to eliminate trial of that issue (when the
claim is canceled)”). This effect of the cancellation of a
patent pursuant to the statute is “no insult to . . . Article
III.” See Patlex, 758 F.2d at 604. In sum, under either
the reissue or reexamination statute, if the PTO confirms
the original claim in identical form, a suit based on that
claim may continue, but if the original claim is cancelled
or amended to cure invalidity, the patentee’s cause of
action is extinguished and the suit fails.


tion.”); see also Steven M. Auvil, Note, Staying Patent
Validity Litigation Pending Reexamination: When Should
Courts Endeavor To Do So?, 41 Clev. St. L. Rev. 315, 326–
37 (1993) (discussing the effect of cancellation, which
“renders the claims unenforceable in the pending litiga-
tion” (i.e., in concurrent district court suits)).
18        FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.


                             III
     Baxter wisely agrees that in general, when a claim is
cancelled, the patentee loses any cause of action based on
that claim, and any pending litigation in which the claims
are asserted becomes moot. However, Baxter argues that
the cancellation of the asserted claims cannot be given
effect at this point in the present litigation, because the
validity of the ’434 patent and Fresenius’ liability for
infringement of that patent were conclusively decided in
2007. Baxter argues that the district court’s 2007 judg-
ment is “final” and “binding” on the parties in this case,
and therefore has res judicata effect within the pending
litigation: “the liability determination and Past Damages
Award are now final and Fresenius is precluded from
relitigating those issues.” Appellee’s Br. 19.
    Baxter is correct that under “well-established princi-
ples of res judicata,” see In re Baxter, 698 F.3d at 1350–51
(Fed. Cir. 2012) (O’Malley, J., concurring in denial of
rehearing en banc), the cancellation of a patent’s claims
cannot be used to reopen a final damages judgment
ending a suit based on those claims. As the Supreme
Court’s decision in Moffitt made clear, “[i]t is a mistake to
suppose . . . that . . . moneys recovered on judgments in
suits . . . might be recovered back [after a patent is can-
celled]. The title to these moneys does not depend upon
the patent, but upon . . . the judgment of the court.” 66
U.S. at 283; see also In re Swanson, 540 F.3d at 1379 n.5
(observing that “an attempt to reopen a final federal court
judgment of infringement on the basis of a reexamination
finding of invalidity might raise constitutional prob-
lems”). 8 Fresenius does not argue otherwise.


     8 As previously stated in In re Construction Equip-
ment Co., 665 F.3d 1254, 1256 n.2 (Fed. Cir. 2011), “[w]e
express no opinion on whether [an infringer] might or
FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.       19
    It is important here to distinguish between different
concepts of finality. “Definitions of finality cannot auto-
matically be carried over from appeals cases to preclusion
problems.” See 18A Charles A. Wright, Arthur R. Miller,
& Edward H. Cooper, Federal Practice and Procedure
§ 4432 (2d ed. 2002). We are also not dealing with finality
for purposes of determining the potential res judicata
effect of this infringement litigation on another suit. We
are concerned instead with whether the judgment in this
infringement case is sufficiently final so that it is immune
to the effect of the final judgment in the PTO proceedings,
as affirmed by this court in In re Baxter.
    In this case, there is no question of reopening a final
court judgment, because no such judgment has been
entered. To be sure, the district court entered a judgment
in November of 2007. But while the district court in 2007
entered a judgment final for purposes of appeal, and that
judgment might have been given preclusive effect in
another infringement case between these parties, it was
not sufficiently final to preclude application of the inter-
vening final judgment in In re Baxter, and in any event,
we set the district court’s judgment aside in the first
appeal in the infringement case. 9 See Fresenius I, 582
F.3d at 1302–03.


might not be entitled to seek abrogation of [an] injunc-
tion” after the underlying patent has been cancelled.
    9   The district court repeatedly and correctly rejected
Baxter’s post-remand arguments that the November 7,
2007 judgment was final and enforceable. The court
refused to authorize execution of the 2007 judgment after
remand, denying Baxter’s motion to confirm that the 2007
judgment on damages was “final and immediately en-
forceable,” and stating that “there is presently no effective
final judgment.” Fresenius USA, Inc. v. Baxter, Int’l, Inc.,
No. 03-CV-1431 (N.D. Cal Sept. 20, 2011), ECF No. 1117.
20         FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
     It is also clear that our remand decision in Fresenius I
was not sufficiently final to prevent the application of In
re Baxter in the pending suit. “To rise to that level, the
litigation must be entirely concluded so that [the] cause of
action [against the infringer] was merged into a final
judgment . . . one that ‘ends the litigation on the merits
and leaves nothing for the court to do but execute the
judgment.’” Mendenhall v. Barber-Greene Co., 26 F.3d
1573, 1580 (1994) (quoting Catlin v. United States, 324
U.S. 229, 233 (1945)). Our remand to the district court in
Fresenius I did not end the controversy between the
parties, or leave “nothing for the court to do but execute
the judgment.” To the contrary, we left several aspects of
the district court’s original judgment unresolved, includ-
ing royalties on infringing machines, royalties on related
disposables, and injunctive relief. Looking to general res
judicata principles governing the preclusive effect of a
judgment, it is well-established that where the scope of
relief remains to be determined, there is no final judg-
ment binding the parties (or the court):
     Finality will be lacking if an issue of law or fact
     essential to the adjudication of the claim has been
     reserved for future determination, or if the court
     has decided that the plaintiff should have relief
     against the defendant of the claim but the amount
     of the damages, or the form or scope of other relief,
     remains to be determined.
Restatement (Second) of Judgments § 13(b) (1982) (em-
phases added). “An order that establishes liability but
leaves open the question of damages or other remedies . . .


In 2012, the district court again refused to authorize
execution of the 2007 judgment, stating that it was no
longer effective and had been superseded. See Fresenius
Med. Care Holdings, Inc. v. Baxter, Int’l, Inc., No. 03-CV-
1431 (N.D. Cal. May 3, 2012), ECF No. 1157.
FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.        21
[is] not final for purposes of preclusion under traditional
analysis.” 18A Charles A. Wright, Arthur R. Miller, &
Edward H. Cooper, Federal Practice and Procedure § 4432
(emphasis added) (2d ed. 2002) (citing G. & C. Merriam
Co. v. Saalfield, 241 U.S. 22, 28, 29 (1916)). “Reversal
and remand for further proceedings on the entire case
defeats preclusion entirely until a new final judgment is
entered by the trial court or the initial judgment is re-
stored by further appellate proceedings.” Id.
     Nor does the existence of an interim appellate deci-
sion on invalidity change the basic rule. The Supreme
Court’s decision in Simmons Co. v. Grier Bros. Co., 258
U.S. 82 (1922), demonstrates that the district court must
apply intervening legal developments affecting the as-
serted patent’s validity, even if the court of appeals al-
ready decided the validity issue the other way. There, the
Third Circuit reversed a district court finding of infringe-
ment. Id. at 84. The Third Circuit held that the patent-
ee’s claim was invalid because it had been improperly
broadened on reissue. Id. The appellate mandate in-
structed the district court to modify its decree in accord-
ance with the decision on appeal, and to award costs to
the infringer. Id. The suit remained pending in the
district court for an accounting of damages for unfair
competition. While the case was pending, the Supreme
Court held in another case involving the same patent, “in
direct opposition to the decision of the [Third] Circuit,”
that the reissued claim was not invalid, because it had not
been broadened on reissue. Id. at 85. In light of this
intervening decision, the district court vacated the inva-
lidity judgment it had entered based on the Third Cir-
cuit’s decision and awarded the patentee damages and an
injunction. Id. at 86. But the Third Circuit reversed,
holding that the intervening Supreme Court decision did
not affect the patentee’s rights. Id. at 87. The Supreme
Court reversed the Third Circuit, holding that the Third
Circuit had no basis for refusing to give effect to its inter-
22         FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
vening decision on the claim’s validity, because the appel-
late mandate had not ended the case. Id. at 91. The
Supreme Court explained,
     [t]he decree entered pursuant to the decision of
     the appellate court . . . evidenced a quasi-
     definitive decision adverse to plaintiffs, which, if
     nothing occurred to prevent, would in due course
     be carried into the final decree. But . . . there was
     nothing to take the case out of the ordinary rule
     that there can be but one final decree in a suit in
     equity.
Id. at 89. “[A] final decree [is] one that finally adjudicates
upon the entire merits, leaving nothing further to be done
except the execution of it.” Id. at 88. Because “[t]he suit
was still pending . . . [i]t was eminently proper that the
decree in the present suit should be made to conform to
[the intervening Supreme Court] decision.” Id. at 91; see
also Marconi Wireless Tel. Co. v. United States, 320 U.S.
1, 47–48 (1943) (“Although the interlocutory decision of
[the trial court] on the question of validity and infringe-
ment was appealable, . . . the decision was not final until
the conclusion of the accounting. Hence the court did not
lack power at any time prior to entry of its final judgment
at the close of the accounting to reconsider any portion of
its decision and reopen any part of the case.” (internal
citations omitted)). Thus, in Simmons, even though there
had been an appellate decision entirely resolving the
patent infringement claims, because there had not yet
been a final judgment on the unfair competition claims,
the Supreme Court’s intervening decision was binding as
to the infringement claims.
    In Simmons, it was the patentee who benefited from
the lack of finality, but the same rule applies when the
beneficiary is the alleged infringer. Our decision in
Mendenhall, 26 F.3d 1573, is on point, and is directly
inconsistent with Baxter’s argument. Mendenhall holds
FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.      23
that a decision finding a patent not invalid but remanding
for further damages proceedings is not a final judgment.
In that case Mendenhall had asserted its patents in
concurrent suits against two alleged infringers, Cedarap-
ids and Astec. Id. at 1576–77. The Astec litigation pro-
duced a verdict that the patents were not invalid, which
this court affirmed on appeal, but we remanded “for
determination of damages and other issues.” Id. at 1576.
While Astec was pending on remand, the asserted patents
were ruled invalid by the district court in the concurrent
Cedarapids suit. Id. at 1577. On appeal in that suit, we
“finally adjudged invalid” all asserted claims of both
patents; certiorari was denied. Id.
    When we invalidated the patents in Cedarapids, the
Astec case was still pending before the district court for
the determination of damages and other issues. Astec
moved to vacate the unfavorable liability judgment in
district court, but the district court denied the motion. On
appeal from the Astec litigation, Astec argued that the
Cedarapids decision barred Mendenhall from recovering
for infringement, because its patents had been invalidat-
ed. Id. at 1580. Mendenhall argued that we could not
give effect to Cedarapids’ intervening invalidation of the
patents, because doing so would conflict with our affir-
mance and appellate mandate in the first Astec appeal.
Id.
    We agreed with Astec and disagreed with Menden-
hall. First, we observed that the issue on appeal was not
whether the panel decision in Astec “should be over-
turned,” but whether Astec could assert a “defense which
arose subsequently,” that is, that Mendenhall’s patents
were legally unenforceable. Id. We explained that the
subsequent invalidation of the asserted patents was a
distinct issue not yet considered on appeal, and that our
prior mandate in Astec
24          FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
      did not rule that the patents were “valid” . . . but
      rather ruled that Astec failed to establish the mer-
      its of its defenses . . . . Thus, this court did not
      “overturn” its prior Astec rulings respecting valid-
      ity by the Cedarapids judgment of invalidity, and
      it does not do so here by recognizing the overrid-
      ing defense of collateral estoppel.
Id.
    We then rejected Mendenhall’s contention that “pro-
ceedings here are too far advanced for redetermination of
liability.” Id. We held that because there had been no
final judgment in the Astec case, we were not barred from
applying the Cedarapids judgment to the pending appeal:
      the judgment of this court on liability in Astec re-
      sulted in a remand for further proceedings. It was
      not the final judgment in the case. To rise to that
      level, the litigation must be entirely concluded so
      that Mendenhall’s cause of action against Astec
      was merged into a final judgment.
Id. (citing Restatement (Second) of Judgments § 13
(1982)). The invalidation of the asserted patent in the
concurrent Cedarapids litigation represented “intervening
controlling authority,” 26 F.3d at 1583, giving Astec an
“overriding defense” that the asserted patents were
invalid and unenforceable. Id. at 1580. In light of that
development,
      [f]or this court to affirm the findings of infringe-
      ment and the willfulness of conduct against one
      appellant, increase damages against the other,
      and uphold injunctions against both, appears
      anomalous in the extreme in connection with pa-
      tents this court has just held invalid.
Id. at 1578. We concluded that “[b]ecause the Mendenhall
patents are invalid, the plaintiffs cannot now enjoin or
recover damages from these defendants. The liability
FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.      25
judgments together with the awards of damages and the
permanent injunctions . . . are reversed.” Id. at 1584.
    This case is virtually identical to Mendenhall. The in-
tervening decision invalidating the patents unquestiona-
bly applies in the present litigation, because the judgment
in this litigation was not final. 10
    Baxter, however, seeks to distinguish Mendenhall on
the grounds that the first Mendenhall appeal was taken
as an interlocutory appeal under section 1292(c)(2),
whereas the first appeal here was taken under section
1295, which provides for appeals from “final” judgments.
See 28 U.S.C. § 1292(c)(2) (authorizing interlocutory
appeals of final judgments in patent cases); 28 U.S.C.
§ 1295 (authorizing appeals from “final” judgments). But
nothing in Mendenhall suggests that the statutory basis
for the first appeal controlled whether it would be given
res judicata effect within the continuing litigation. To the
contrary, the point made in Mendenhall was that because
there had been no final judgment for res judicata purpos-
es, the patentee was improperly “attempting to invoke a
novel kind of res judicata within a case.” 26 F.3d at 1580–
81.
   Baxter also argues that Mendenhall’s holding should
apply only where the patent has been invalidated by a

   10   See also Luminous Unit Co. v. Freeman-Sweet Co.,
3 F.2d 577, 579–80 (7th Cir. 1924) (holding that a district
court had to give effect to a cancellation that became
effective after the district court entered a decree for the
patentee on validity and infringement, but before the
entry of final judgment in the suit); Translogic Tech., Inc.
v. Hitachi, Ltd., 250 Fed. App’x 988, 2007 WL 2973955
(Fed. Cir. Oct. 12, 2007) (nonprecedential) (reversing
district court judgment in favor of the patentee, and
remanding for dismissal, in light of our affirmance of the
PTO’s determination that the claims were invalid).
26        FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
district court. Baxter argues that because different
standards apply in a PTO reexamination and a validity
proceeding before the district court, the patent’s invalida-
tion in a reexamination does not have collateral estoppel
effect. But there is no basis for distinguishing between
the effects of a final, affirmed court decision determining
invalidity and a final, affirmed PTO decision determining
invalidity on a pending litigation. The latter is binding
not because of collateral estoppel, but because Congress
has expressly delegated reexamination authority to the
PTO under a statute requiring the PTO to cancel rejected
claims, and cancellation extinguishes the underlying basis
for suits based on the patent.
    Under Baxter’s different standards theory, the cancel-
lation of claims by the PTO could never affect district
court litigation, contrary to the statute. As the Supreme
Court held in Moffitt, “unless [a patent] exists, and is in
force at the time of trial and judgment, the suits fail.” 66
U.S. at 283. Baxter’s problem is that it no longer has a
viable cause of action in the pending case.
                            IV
    Baxter next argues that under Plaut v. Spendthrift
Farm, Inc., 514 U.S. 211 (1995), allowing a PTO determi-
nation to control the outcome of pending litigation is
unconstitutional, because it offends the separation of
powers. But Plaut lends no support to such an assertion
where, as here, the suit is not over and there has been no
final judgment.
    In Plaut, the Supreme Court made clear that the
power to issue a final judgment and thereby conclusively
resolve a case resides in the judicial branch; coordinate
branches cannot retroactively compel a case to be reo-
pened. Id. at 218–19. But Plaut also unambiguously
stated that
FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.        27
    [w]hen a new law makes clear that it is retroac-
    tive, an appellate court must apply that law in re-
    viewing judgments still on appeal that were
    rendered before the law was enacted, and must al-
    ter the outcome accordingly.
Id. at 226 (emphasis added). Plaut thus recognized “[t]he
general rule . . . that an appellate court must apply the
law in effect at the time it renders its decision,” Thorpe v.
Hous. Auth. of the City of Durham, 393 U.S. 268, 281
(1969), which is the principle that controls here. 11 The
Supreme Court has held that this reasoning applies
“where the change [i]s constitutional, statutory, or judi-
cial,” because the general principle “applies with equal
force where the change is made by an administrative
agency acting pursuant to legislative authorization.”
Thorpe, 393 U.S. at 282 (remanding for the application of
new rules issued by HUD while the case was pending
before the Court). Our decisions giving effect to the PTO’s
cancellation of claims asserted in pending suits are fully
consistent with our duty to “apply the law in effect at the
time [we] render[ a] decision.” Bradley, 416 U.S. at 711.
The general principle stated in Moffitt, Thorpe, and Plaut

    11   See also Harper v. Va. Dep’t of Taxation, 509 U.S.
86, 97 (1993) (“When this Court applies a rule of federal
law to the parties before it, that rule is the controlling
interpretation of federal law and must be given full retro-
active effect in all cases still open on direct review and as
to all events, regardless of whether such events predate or
postdate our announcement of the rule.”); Bradley v. Sch.
Bd. of City of Richmond, 416 U.S. 696, 711 (1974) (when a
case is pending on review “a court is to apply the law in
effect at the time it renders its decision, unless doing so
would result in manifest injustice or there is statutory
direction or legislative history to the contrary”); id. at 713
n.17; Thorpe, 393 U.S. at 282; United States v. Schooner
Peggy, 1 Cranch 103, 110 (1801).
28          FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
controls regardless of whether the plaintiff’s cause of
action is “extinguished” by the repeal of a statute or by
the PTO’s cancellation of a claim pursuant to reexamina-
tion. Moffitt invoked this very principle to explain why
pending suits based on cancelled claims must fall:
     [a cancelled patent] can no more be the foundation
     for the assertion of a right after [its] surrender,
     than could an act of Congress which has been re-
     pealed. . . . [U]nless it exists, and is in force at the
     time of trial and judgment, the suits fail.
66 U.S. at 283.
     It is also quite clear that we have not reached the
stage at which Plaut precludes reopening a case. We have
held that a new statute enacted even after a final decision
on appeal is applicable in a pending case, so long as our
mandate ending the litigation has not yet issued. GPX
Int’l Tire Corp. v. United States, 678 F.3d 1308, 1312
(Fed. Cir. 2012) (“Unlike Plaut, where Congress attempt-
ed to undo a final judgment, this case [i]s still pending on
appeal, . . . our mandate ha[s] not yet issued.” (internal
citations omitted)). 12 Our sister circuits have done like-

     12  Baxter cites Qualcomm, Inc. v. FCC, 181 F.3d
1370, 1380 (D.C. Cir. 1999), for the proposition that a
court cannot “reconsider its prior affirmed judgment
based on a change in law, even though, like here, the
[Qualcomm] case was remanded on a remedy issue.”
Appellee’s Suppl. Auth. 1. But Qualcomm involved very
different circumstances: in that case, the appellate man-
date in question was “not simply ‘for further proceed-
ings,’” but ordered specific, immediate relief for a party,
that is, the judiciary had entered “a final judgment enti-
tling QUALCOMM to a preference.” 181 F.3d at 1380 n.7.
Because of the finality of the earlier decision, and the
legislative history of the intervening legislation, the
legislation was construed to be inapplicable.
FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.       29
wise. See, e.g., Bryant v. Ford Motor Co., 886 F.2d 1526,
1528–31 (9th Cir. 1989) (vacating a prior mandate in light
of superseding legislation, where the current mandate
had not yet issued); T.S. Alphin, Inc. v. Henson, 552 F.2d
1033, 1034–35 (4th Cir. 1977) (similar). There is no basis
to read Plaut to impose restrictions on reopening before
there has been a final judgment ending the case, that is,
“a judicial decision [that] becomes the last word of the
judicial department with regard to a particular case or
controversy.” Plaut, 514 U.S. at 227.
     Finally, Baxter argues that giving effect to the cancel-
lation in this suit gives the reexamination statute an
improperly “retroactive” effect on the enforceability of its
patent. According to Baxter, “[i]f Congress intended for
affirmed determinations of validity to be set aside . . . it
would have drafted the reexamination statute to provide
for such a result.” Appellee’s Br. 24. But it could hardly
be clearer that Congress meant for cancellation to termi-
nate pending suits. When it amended the pertinent
statutory language in 1928, Congress acknowledged that
cancelled claims were void ab initio. It did not overrule
the application of that principle to cancelled claims, but
rather modified the rule to allow continuation of pending
suits under circumstances inapplicable here. And in
1980, it made that provision applicable to reexamination.
                               V
    In closing, it is appropriate to say a few words about
the dissent, which reiterates a view, expressed by Judge
Newman in various other cases, that PTO reexamination
cannot affect pending infringement suits. The dissent
candidly acknowledges that this position has been con-
sistently rejected. 13 As discussed above, the statute

    13  See Dissent at 13; In re Baxter, 698 F.3d at 1351
(Newman, J., dissenting from denial of rehearing en
banc); In re Construction, 665 F.3d at 1257 (Newman, J.,
30        FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.

requires that a final PTO decision affirmed by this court
be given effect in pending infringement cases that are not
yet final. Baxter, as a general matter, does not argue
otherwise. The dissent’s claim that the earlier judgment
in Fresenius I is a final, binding judgment for purposes of
res judicata is incorrect, as discussed at length earlier in
this opinion.
     The dissent, however, cites the Restatement (Second)
of Judgments and various cases recognizing that even an
interim court decision can have collateral estoppel effect
(though it does not operate as res judicata, that is, claim
preclusion). The argument appears to be that the PTO
was barred from invalidating the claims during reexami-
nation (and that we were in turn barred from affirming
the PTO’s determination) because the PTO was bound by
collateral estoppel arising from the interim decision in
Fresenius I, which had found the asserted claims not
invalid. This identical argument was considered and
(properly) rejected in In re Baxter. See 678 F.3d at 1365;
see also, e.g., Ethicon, 849 F.2d at 1429 n.3 (holding that
“[t]he doctrine of collateral estoppel does not prevent the
PTO from completing the reexamination,” if a district
court finds the patent not invalid).
    The argument has even less merit here. Even if col-
lateral estoppel were implicated, both the Restatement
and numerous cases have held that an interim decision in
one suit (here, Fresenius I) cannot prevail over a final
judgment on the same issue in another suit (here, In re
Baxter). See Restatement (Second) of Judgments, §§ 14,

dissenting); see also In re Swanson, 540 F.3d at 1377;
Ethicon, Inc., v. Quigg, 849 F.2d 1422, 1429 n.3 (Fed. Cir.
1988) (“[A] court’s decision upholding a patent’s validity is
not ordinarily binding on another challenge to the pa-
tent’s validity, in either the courts or the PTO.” (internal
citations omitted)).
FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.     31
27 (1982). 14 That is the explicit teaching of the Supreme
Court’s decision in Simmons, and our decision in
Mendenhall, discussed earlier. There is no basis for
departing from that established rule.
    In light of the cancellation of Baxter’s remaining
claims, Baxter no longer has a viable cause of action
against Fresenius. Therefore, the pending litigation is
moot. We vacate the district court’s judgment and re-
mand with instructions to dismiss.
             VACATED AND REMANDED
                            COSTS
   Costs to Fresenius.




   14    Indeed, even where two final court judgments con-
flict, the settled rule is that the later judgment, not the
earlier, has preclusive force going forward. See Restate-
ment (Second) of Judgments § 15 (1982) (Comment (b));
see also id. (Comment (c)) (stating that this rule “governs
the effect of a judgment by way of merger, bar, or issue
preclusion”); see generally Ruth B. Ginsburg, Judgments
in Search of Full Faith and Credit: The Last-in-Time Rule
for Conflicting Judgments, 82 Harv. L. Rev. 798 (1969).
  United States Court of Appeals
      for the Federal Circuit
                 ______________________

         FRESENIUS USA, INC., AND
  FRESENIUS MEDICAL CARE HOLDINGS, INC.,
             Plaintiffs-Appellants,

                             v.

      BAXTER INTERNATIONAL, INC., AND
     BAXTER HEALTHCARE CORPORATION,
           Defendants-Cross Appellants.
             ______________________

                    2012-1334, -1335
                 ______________________

   Appeal from the United States District Court for the
Northern District of California in No. 03-CV-1431, Judge
Phyllis J. Hamilton.
                 ______________________

NEWMAN, Circuit Judge, dissenting.
    The court today authorizes the Patent and Trademark
Office, an administrative agency within the Department
of Commerce, to override and void the final judgment of a
federal Article III Court of Appeals. The panel majority
holds that the entirety of these judicial proceedings can be
ignored and superseded by an executive agency’s later
ruling.
    This holding violates the constitutional plan, for
“Judgments, within the powers vested in courts by the
Judiciary Article of the Constitution, may not lawfully be
revised, overturned or refused faith and credit by another
2          FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
Department of Government.” Chi. & S. Air Lines, Inc. v.
Waterman S.S. Corp., 333 U.S. 103, 113 (1948).
    These judicial proceedings started with trial in the
district court and the district court’s final judgment, then
appeal to the Federal Circuit and our appellate final
judgment, followed by denial of rehearing and denial of
rehearing en banc, followed by issuance of this court’s
mandate, followed by denial of certiorari. 1 This court
remanded to the district court for the purpose of review-
ing post-judgment damages, and the district court did so.
That decision is the subject of this appeal.
    My colleagues now hold that this entire litigation and
decisional panoply is negated by the later decision of the
Patent and Trademark Office of the issue of validity. My
colleagues hold that the prior final adjudication by this
court of validity and infringement is irrelevant, and that
the later decision by the PTO overrides and displaces our
prior adjudication, depriving the parties to that adjudica-
tion of their binding judgments.
    This holding violates the rules of finality, for judg-
ments of Article III courts are “final and conclusive upon
the rights of the parties,” Gordon v. United States, 117
U.S. 697, 702 (1864); Plaut v. Spendthrift Farm, Inc., 514
U.S. 211, 226 (1995) (same).
    I respectfully dissent.


    1   The panel majority misstates or misunderstands
the position of this dissent. I do not propose that “PTO
reexamination cannot affect pending infringement suits,”
as the majority describes the dissent, maj. op. 29. I
propose that the final decision in a patent infringement
suit cannot be overturned by a later decision on reexami-
nation. I propose that to hold otherwise violates the rules
of finality of judgments, and violates the constitutional
plan.
 FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.      3
                               I
                THE CONSTITUTIONAL PLAN
    An agency of the executive branch cannot override or
revise or ignore, or deny faith and credit to, the judgment
of an Article III court.
   The record of history shows that the Framers
   crafted this charter of the judicial department
   with an expressed understanding that it gives the
   Federal Judiciary the power, not merely to rule on
   cases, but to decide them, subject to review only
   by superior courts in the Article III hierarchy—
   with an understanding, in short, that a judgment
   conclusively resolves the case because a ‘Judicial
   Power’ is one to render dispositive judgments.
Plaut, 514 U.S. at 218–19 (internal quotations omitted,
emphasis in original).
    My colleagues hold that a PTO reexamination deci-
sion, made after final adjudication of patent validity in
the district court and the Federal Circuit, negates the
prior judicial decision. However, the constitutional struc-
ture does not permit the executive branch to override
judgments of the courts. The Constitution “prohibits one
branch from encroaching on the central prerogatives of
another.” Miller v. French, 530 U.S. 327, 342 (2000).
    This allocation of authority is not casual or perfuncto-
ry; it is “an inseparable element of the constitutional
system of checks and balances.” N. Pipeline Constr. Co. v.
Marathon Pipe Line Co., 458 U.S. 50, 58 (1982). The
Court has explained:
   [T]he doctrine of separation of powers is a struc-
   tural safeguard rather than a remedy to be ap-
   plied only when specific harm, or risk of specific
   harm, can be identified. In its major features (of
   which the conclusiveness of judicial judgments is
4          FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
    assuredly one) it is a prophylactic device, estab-
    lishing high walls and clear distinctions because
    low walls and vague distinctions will not be judi-
    cially defensible in the heat of interbranch con-
    flict.
Plaut, 514 U.S. at 239 (emphasis in original).
     The issue is not whether patents can be reexamined
in PTO proceedings; of course they can. However, the
constitutional framework requires that when there has
been a prior judicial determination of the issue of patent
validity, the conclusiveness of judicial rulings resolves the
determination. Adjudications by the Judicial Branch bind
all three branches of government. “Congress cannot vest
review of the decisions of Article III courts in officials of
the Executive Branch.” Plaut, 514 U.S. at 218.
     The reasons are not simply a matter of the neat or-
ganization of government. “Article III, §1 preserves to
litigants their interest in an impartial and independent
federal adjudication of claims within the judicial power of
the United States. . . .” Commodity Futures Trading
Comm’n v. Schor, 478 U.S. 833, 850 (1986). No statute,
no constitutional interpretation, holds that an executive
agency is not bound by a judicial decision. The Court
reiterated in Miller v. French, 530 U.S. at 343, that “an
effort by a coequal branch to ‘annul a final judgment’ is
‘an assumption of Judicial power’ and therefore forbid-
den,” quoting Plaut, 514 U.S. at 224.
    The PTO can neither invalidate, nor revive, a patent
whose validity the court has adjudicated. Such adminis-
trative authority would render the court’s judgment no
more than “advisory.” Article III courts are not permitted
to render advisory opinions. Gordon, 117 U.S. at 702; see
Sierra Club v. Morton, 405 U.S. 727, 732 n.3 (1972)
(“Congress may not confer jurisdiction on Art. III federal
courts to render advisory opinions . . . because suits of this
 FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.      5
character are inconsistent with the judicial function
under Art. III.”).
    Article III courts “render no judgments not binding
and conclusive on the parties and none that are subject to
later review or alteration by administrative action.” Chi.
& S. Air Lines, 333 U.S. at 113–14. This court’s ruling
places itself and the PTO in conflict with the Constitution.
The system of reexamination was designed for a quite
different purpose, a purpose that did not incur constitu-
tional conflict.
   The purpose of the system of reexamination is to pro-
vide a mechanism for remedying errors in the initial PTO
examination. During PTO reexamination patent claims
can be revised and amended, an action not available in
the courts. However, when the issue of validity of the
claims has already been resolved in litigation, subsequent
redetermination by the PTO is directly violative of the
structure of government.
    The system of patent reexamination was adopted in
order to simplify or avoid litigation, not to increase the
litigation burden. At the legislative hearings, Patent
Commissioner Diamond explained:
   Reexamination would eliminate or simplify a sig-
   nificant amount of patent litigation. In some cas-
   es, the PTO would conclude as a result of
   reexamination that a patent should not have is-
   sued. A certain amount of litigation over validity
   and infringement thus would be completely avoid-
   ed.
Patent Reexamination: Hearing on S. 1679 Before the
Senate Comm. on the Judiciary, 96th Cong. 15–16 (1979)
(“Senate Hearings”).
     Reexamination’s proponents saw three principal bene-
fits to the pending legislation, as summarized in Patlex
Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985):
6         FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
    First, the new procedure could settle validity dis-
    putes more quickly and less expensively than the
    often protracted litigation involved in such cases.
    Second, the procedure would allow courts to refer
    patent validity questions to the expertise of the
    Patent Office. See Senate Hearings at 1, wherein
    Senator Bayh said that reexamination would be
    “an aid” to the trial court “in making an informed
    decision on the patent’s validity.”
    Third, reexamination would reinforce “investor
    confidence in the certainty of patent rights” by af-
    fording the PTO a broader opportunity to review
    “doubtful patents.” 126 Cong. Rec. 29,895 (1980)
    (statement of Rep. Kastenmeier).
Id. at 602. Senator Birch Bayh stressed the benefits of
relieving the burdens of litigation on parties and courts:
    Reexamination would allow patent holders and
    challengers to avoid the present costs and delays
    of patent litigation . . . Patent reexamination will
    also reduce the burden on our overworked courts
    by drawing on the expertise of the Patent and
    Trademark Office.
126 Cong. Rec. 30,364 (1980).
    The legislative record is extensive, and consistent, on
the purpose of reduction in burden and expense of the
administrative action compared with litigation, by ena-
bling the PTO to correct errors in examination of the
patent. Representative Hollenbeck testified:
    As a result of the provision for reexamination, the
    potential conflict can be settled by the Patent Of-
    fice itself in far shorter time and at far smaller
    expense to the challenger or to the patent holder
    than would be the case if the only recourse was
    through the court system.
 FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.        7
126 Cong. Rec. 29,901 (1980). These goals were again
recited in the House Report accompanying enactment of
the reexamination statute:
   Reexamination will permit efficient resolution of
   questions about the validity of issued patents
   without recourse to expensive and lengthy in-
   fringement litigation. . . . The reexamination of
   issued patents could be conducted with a fraction
   of the time and cost of formal legal proceedings
   and would help restore confidence in the effec-
   tiveness of our patent system. . . . It is anticipated
   that these measures provide a useful and neces-
   sary alternative for challengers and for patent
   owners to test the validity of United States pa-
   tents in an efficient and relatively inexpensive
   manner.
H.R. Rep. No. 96–1307(I) at 3–4 (1980), reprinted in 1980
U.S.C.C.A.N. 6460, 6462–63. The entirety of the legisla-
tive record stresses reexamination as an alternative to
litigation, not a dominating sequel to litigation.
    The record shows the concern of the innovation com-
munity about the burdens of reexamination proceedings,
and apprehension about the tactical opportunities for
harassment. Commissioner Diamond responded to these
concerns, pointing out the balance of benefits and bur-
dens, and that the reexamination statute
   carefully protects patent owners from reexamina-
   tion proceedings brought for harassment or spite.
   The possibility of harassing patent owners is a
   classic criticism of some foreign reexamination
   systems and we made sure it would not happen
   here.
Hearings on H.R. 6933, 6934, 3806 & 215, Industrial
Innovation & Patent & Copyright Law Amendments, 96th
Cong., 2d Sess. 594 (1980).
8          FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
  With this recognition of the potential for abuse, if the
proponents of reexamination had expected and intended
the tactical gaming and harassment endorsed by the
panel majority—such as here illustrated, where the
Baxter patent was tied up in litigation and reexamination
until the patent expired—surely some mention would
have been made of this departure from the simplification
and economy for which reexamination was intended. 2


    2   The majority criticizes the district court’s denial of
Fresenius’ request to stay the infringement trial after
Fresenius requested reexamination, after receiving an
adverse summary judgment of infringement. Maj. op. 9.
The majority neglects to mention the district court’s
concern for Fresenius’ abuse of the reexamination process,
the district court stating:
    “Parties should not be permitted to abuse the pro-
    cess by applying for reexamination after protract-
    ed, expensive discovery or trial preparation.”
    Freeman v. Minnesota Mining and Manufacturing
    Co., 661 F. Supp. 886, 888 (D. Del. 1987) (citations
    omitted). To do so would be to allow a party to
    use reexamination as “a mere dilatory tactic.” Id.
    It is difficult to imagine a scenario in which a dila-
    tory motive could be more apparent. . . . Frese-
    nius should not have waited until it had had a
    trial, had litigated motions for judgment as a mat-
    ter of law and for a new trial on the merits, and
    then had a favorable PTO action to request a
    stay. Any irreparable harm that Fresenius will
    suffer will be of its own making, attempting, as it
    did, to “game the system” by playing both fields
    simultaneously. . . . [T]o allow Fresenius to now
    derail this litigation would be to sanction the most
    blatant abuse of the reexamination process. The
    express purpose of the reexamination procedure is
 FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.        9
    Instead, my colleagues announce that “Congress ex-
pected reexamination to take place concurrent with
litigation, and that cancellation of claims during reexami-
nation would be binding in concurring infringement
litigation.” Maj. op. 16. No hint can be found in the
legislative record for an expectation of concurrent pro-
ceedings; no hint of an intent that a PTO reexamination
decision would override a prior judicial decision rendered
in either prior or concurrent litigation. There is no au-
thority for the majority’s creative revision of the historical
record.
    The panel majority also errs in its understanding of
the role of reexamination, which was well understood by
the PTO, as stated in an amicus brief filed in response to
an Order of the Federal Circuit in pending litigation:
    Indeed, the doctrine of separation of powers clear-
    ly prevents any decision of the PTO from having
    the effect of overturning any decision of the lower
    court or [the Federal Circuit] respecting the ‘valid-
    ity’ of the Eis patent. . . . Nowhere in that reex-
    amination legislation does Congress provide that
    any order of the Commissioner in a reexamination
    proceeding will operate to vacate, modify, revise
    or overrule in any manner any order entered by a
    federal court. It is axiomatic, in view of the sepa-
    ration of powers doctrine, that a decision of the
    PTO, as part of the Executive Branch of the gov-
    ernment, does not and cannot frustrate or dero-
    gate in any way judgments of the courts as part of
    the Judicial Branch.

    to shift the burden from the courts by reducing
    costly and time-consuming litigation.
Order at *6–8, Fresenius USA, Inc. v. Baxter Int’l, Inc.,
No. 03-CV-1431 SBA (N.D. Cal. June 6, 2007) (citations
omitted, emphasis in original).
10         FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
Amstar Corp. v. Envirotech Corp., Nos. 1986-1340, -1360
(Fed. Cir. 1986), Amicus Curiae Br. for the Comm’r of
Patents & Trademarks, 1986 WL 734249, at *9–10.
    The reexamination statute does not provide that a
PTO reexamination decision will override the judicial
decision. It must be assumed that the legislators did not
violate the rules of either separation of powers or judicial
finality. See INS v. St. Cyr, 533 U.S. 289, 300 n.12 (2001)
(We must “not lightly assume that Congress intended to
infringe constitutionally protected liberties or usurp
power constitutionally forbidden it.”). The role of patent
reexamination is not to alter a final adjudication by the
courts.
    If it were intended that PTO reexamination would
override prior judicial decisions, it is inconceivable that no
one would have mentioned it in the legislative process. If
it were contemplated, through patent reexamination, to
negate the “conclusiveness of judicial judgments,” Plaut,
514 U.S. at 239, this departure from the constitutional
plan would have occasioned comment.
     My colleagues attempt to avert the constitutional
challenge presented by their ruling, by suggesting that
here there was no final decision, citing as authority John
Simmons Co. v. Grier Brothers Co., 258 U.S. 42 (1922),
and Mendenhall v. Berber-Greene Co., 26 F.3d 1573 (Fed.
Cir. 1994). These are my colleagues’ only authority for
their assault on the principles of separation of powers.
However, these cases, which relate solely to court-to-court
relationships, are irrelevant to the constitutional question
of whether an administrative agency can override or
ignore a prior judicial decision of the same issue. The
issue here presented is not the relationship between
different courts, but between the branches of government.
    My colleagues endorse administrative abrogation of
final judicial decisions, despite the constitutional prohibi-
tion as explained from the earliest days of the nation in
 FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.     11
Hayburn’s Case, 2 U.S. (2 Dall.) 408 (1792) (the federal
judiciary will not render judgments subject to revision,
suspension, modification, or other review by executive or
legislative branches). The courts understand this princi-
ple of constitutional government, e.g., Town of Deerfield,
N.Y. v. FCC, 992 F.2d 420, 428 (2d Cir. 1993) (“A judg-
ment entered by an Article III court having jurisdiction to
enter that judgment is not subject to review by a different
branch of the government. . . .”); United States v. John-
ston, 258 F.3d 361, 373 (5th Cir. 2001) (Higginbotham, J.,
concurring) (“It is axiomatic that only an Article III judge
can be vested with the power to conduct a dispositive
review of the judgment of another Article III court.”);
Taylor v. United States, 181 F.3d 1017, 1024 (9th Cir.
1999) (“Inasmuch as judicial jurisdiction implies the
power to hear and determine a case, once court decisions
achieve finality they may not be revised, overturned or
refused faith and credit by another Department of Gov-
ernment.”); Georgia Association of Retarded Citizens v.
McDaniel, 855 F.2d 805, 810 (11th Cir. 1988) (The princi-
ple of separation of powers “protects judicial action from
superior legislative review, a regime that would be obvi-
ously inconsistent with due process of law and subversive
of the judicial branch of government.”); Corbell v. Norton,
263 F. Supp. 2d 58, 65 n.4 (D.D.C. 2003) (“The appropria-
tions provision at issue attempts to undermine the finali-
ty of an order issued by the judicial branch, which may
constitute an unwarranted invasion of the authority
vested in the federal courts by Article III of the U.S.
Constitution.”).
    By authorizing PTO reexamination to override a prior
judicial adjudication of patent validity, this court has
created a constitutional violation that should have been
avoided. See NLRB v. Catholic Bishop of Chi., 440 U.S.
490, 500–01 (1979) (courts are required to choose any
reasonable construction of a statute that would eliminate
the need to confront a contested constitutional issue);
12         FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
Hooper v. California, 155 U.S. 648, 657 (1895) (courts
must resort to “every reasonable construction . . . in order
to save a statute from unconstitutionality”).
    Here only one constitutionally permissible outcome is
available. Just as this court’s adjudication of the validity
of claims 26–31 of the ’434 patent can not be relitigated
between Baxter and Fresenius in another court, neither
can it be overridden by the PTO on reexamination at
Fresenius’ initiative. See Chi. & S. Air Lines, 333 U.S. at
113; United States v. O’Grady, 89 U.S. (22 Wall.) 641, 648
(1874) (“[I]t is quite clear that Congress cannot subject
the judgments of the Supreme Court to the re-
examination and revision of any other tribunal or any
other department of the government.”).
                              II
                          FINALITY
     This court’s judgment in Fresenius USA, Inc. v. Baxter
International, Inc., 582 F.3d 1288 (Fed. Cir. 2009) finally
resolved the issue of patent validity. The finality created
by judicial decisions is essential to an effective legal
system. “It ‘has found its way into every system of juris-
prudence, not only from its obvious fitness and propriety,
but because without it, an end could never be put to
litigation.’” San Remo Hotel. L.P. v. City & Cnty. of S.F.,
Cal., 545 U.S. 323, 336–37 (2005) (quoting Hopkins v. Lee,
19 U.S. (6 Wheat.) 109, 114 (1821)). In Southern Pacific
Railroad v. United States, 168 U.S. 1 (1897) the Court
reiterated:
     [A] right, question, or fact distinctly put in issue,
     and directly determined by a court of competent
     jurisdiction, as a ground of recovery, cannot be
     disputed in a subsequent suit between the same
     parties or their privies . . . . This general rule is
     demanded by the very object for which the civil
     courts have been established, which is to secure
 FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.      13
   the peace and repose of society by the settlement
   of matters capable of judicial determination.
Id. at 48–49. Patent validity is “capable of judicial deter-
mination,” id., and validity of the ’434 patent was so
determined, by final decision and mandate of this court,
from which certiorari was requested and denied.
   Judicial repose is fundamental to a nation governed by
law. In Federated Department Stores, Inc. v. Moitie, 452
U.S. 394 (1981) the Court discussed the public policy
served by finality:
   Public policy dictates that there be an end of liti-
   gation; that those who have contested an issue
   shall be bound by the result of the contest, and
   that matters once tried shall be considered forever
   settled as between the parties.
Id. at 401 (citations omitted). The Federal Circuit has
not been faithful to this principle. In In re Construction
Equipment, 665 F.3d 1254 (Fed. Cir. 2011) this court
upheld the PTO’s invalidation based on reexamination of
a patent that had been litigated and held valid eleven
years earlier, the reexamination having been initiated
by a party to the prior litigation. And in In re Swanson,
540 F.3d 1368 (Fed. Cir. 2008) this court upheld the
PTO’s invalidation of claims of a patent that had been
held valid by the Federal Circuit in prior litigation,
although the court acknowledged that “an attempt to
reopen a final federal court judgment of infringement on
the basis of a reexamination finding of invalidity might
raise constitutional problems.” Id. at 1379 n.5.
    The loser in this tactical game of commercial ad-
vantage and expensive harassment is the innovator and
the public, for it is now notorious that any invention of
commercial value is ripe for not only protracted litigation
but consecutive reexamination until the patent falls, or
the patent or the patentee expires. The stability that is
14         FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
the foundation of the rule of law is lost, along with the
patent-supported incentive to create and produce new
things to public benefit.
   The Court discussed the role of judicial finality in
Southern Pacific Railroad:
     [E]nforcement [of judicial finality] is essential to
     the maintenance of social order; for the aid of ju-
     dicial tribunals would not be invoked for the vin-
     dication of rights of person and property if, as
     between parties and their privies, conclusiveness
     did not attend the judgments of such tribunals in
     respect of all matters properly put in issue, and
     actually determined by them.
168 U.S. at 49 (citations omitted). The panel majority’s
holding today violates this “essential” precept, for alt-
hough the validity of the ’434 patent was conclusively
adjudicated in the district court and the Federal Circuit,
in proceedings in which Fresenius fully participated, my
colleagues treat that conclusive adjudication as if it never
happened.
   In San Remo Hotel the Court again reviewed the rule of
full faith and credit to judicial rulings:
     The general rule implemented by the full faith
     and credit statute—that parties should not be
     permitted to relitigate issues that have been re-
     solved by courts of competent jurisdiction—
     predates the Republic.
545 U.S. at 336. The issue of validity of Baxter’s ’434
patent was raised, litigated, and decided, with full partic-
ipation of the accused infringer; it cannot be relitigated.
See Marrese v. Am. Acad. of Orthopaedic Surgeons, 470
U.S. 373, 390–91 (1985) (“[A] party is precluded from
asserting a claim that he had a ‘full and fair opportunity’
to litigate in a prior action.”).
 FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.           15
    On enactment of the initial reexamination statute, the
PTO embodied the legislative purpose in MPEP §2286
(4th ed. rev.7, July 1981), that
    it is the policy of the Office that it will not “reliti-
    gate” in a reexamination proceeding an issue of
    patentability which has been resolved by a federal
    court on the merits after a thorough consideration
    of the prior art called to its attention in an adver-
    sary context.
That policy gave way to aberrant guidance from the
Federal Circuit, in Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1429 (Fed. Cir. 1988) (“To the extent MPEP § 2286 states
that the PTO is bound by a court’s decision upholding a
patent’s validity, it is incorrect.”). It is time to restore not
only the constitutional obligation, but also the legislative
purpose.
    The panel majority argues that the rules of finality do
not apply here because the Federal Circuit, with its final
judgment, included a remand to the district court to
assess post-judgment damages. The courts of the nation
have dealt with a variety of circumstances in which a
final judgment included a remand to the district court.
Here, all of the issues on appeal were finally adjudicated
by the Federal Circuit; the remand authorized the district
court to determine only post-judgment royalties. The
remand had no relation to any issue in reexamination;
validity had been finally resolved in the courts.
    The majority invokes what it calls “traditional” no-
tions of finality, maj. op. 20–21, proposing that “tradition”
means that if anything whatsoever remains to be done
after final judgment, the final judgment is not final, and
any issue of that judgment can be redecided. The majori-
ty proposes that the final adjudication of patent validity
can be redecided by the courts and thus by the PTO,
because of the remand to assess post-judgment damages.
This theory is contrary to the precedent of every circuit.
16           FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
All circuits impose finality and preclusion as to issues
that were finally decided in full and fair litigation. The
Restatement summarizes the general rule:
     [Preclusion requires] that the decision to be car-
     ried over was adequately deliberated and firm,
     even if not final in the sense of forming a basis for
     a judgment already entered. Thus preclusion
     should be refused if the decision was avowedly
     tentative. On the other hand, that the parties
     were fully heard, that the court supported its de-
     cision with a reasoned opinion, that the decision
     was subject to appeal or was in fact reviewed on
     appeal, are factors supporting the conclusion that
     the decision is final for the purpose of preclusion.
Restatement (Second) of Judgments §13 cmt. g (1982).
The courts often cite the reasoning in Lummus Co. v.
Commonwealth Oil Refining Co., 297 F.2d 80 (2d Cir.
1961):
     Whether a judgment, not “final” in the sense of 28
     U.S.C. § 1291, ought nevertheless be considered
     “final” in the sense of precluding further litigation
     of the same issue, turns upon such factors as the
     nature of the decision (i.e., that it was not avowed-
     ly tentative), the adequacy of the hearing, and the
     opportunity for review. “Finality” in the context
     here relevant may mean little more than that the
     litigation of a particular issue has reached such a
     stage that a court sees no really good reason for
     permitting it to be litigated again.
Id. at 89.
    All of the circuits have applied preclusion and estop-
pel for issues that were litigated and decided, as the
particular facts have warranted. Following is a sampling;
starting with the First Circuit, in O’Reilly v. Malon, 747
F.2d 820 (1st Cir. 1984) the court stated:
 FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.        17
    Whether a judgment, not ‘final’ in the sense of 28
    U.S.C. § 1291, ought nevertheless be considered
    ‘final’ in the sense of precluding further litigation
    of the same issue, turns upon such factors as the
    nature of the decision (i.e., that it was not avowed-
    ly tentative), the adequacy of the hearing, and the
    opportunity for review.
Id. at 822–23 (quoting Lummus Co., 297 F.2d at 89). The
Second Circuit in Zdanok v. Glidden Co., 327 F.2d 944 (2d
Cir. 1964) stated that
    collateral estoppel does not require a judgment
    which ends the litigation and leaves nothing for
    the court to do but execute the judgment, but in-
    cludes many dispositions which, though not final
    in that sense, have nevertheless been fully litigat-
    ed.
Id. at 955 (citations omitted).
    The Third Circuit, applying these principles, ex-
plained that issue preclusion is a “pliant” concept, as in
Henglein v. Colt Industries Operating Corp., 260 F.3d 201
(3d Cir. 2001):
    Preliminarily, we observe that much of the Plans’
    argument rests upon a concept of “finality” that is
    unduly rigid. In Dyndul v. Dyndul, 620 F.2d 409
    (3d Cir. 1980) (per curiam), we commented that
    finality for purposes of issue preclusion is a more
    “pliant” concept than it would be in other con-
    texts.
Id. at 209–10 (citations omitted).
    When an issue has been finally decided it cannot be
reopened, although other issues remain open. The Fourth
Circuit, in Swentek v. USAIR, Inc., 830 F.2d 552 (4th Cir.
1987), stressed the common sense of issue preclusion and
collateral estoppel:
18         FRESENIUS USA, INC.    v. BAXTER INTERNATIONAL, INC.
     We do not think the trial judge was required to di-
     rect entry of judgment under Rule 54(b) and await
     the appeal of Swentek’s privacy and battery
     claims before assigning the prior jury determina-
     tions preclusive effect . . . . Finality for purposes
     of collateral estoppel is a flexible concept and
     “may mean little more than that the litigation of a
     particular issue has reached such a stage that a
     court sees no really good reason for permitting it
     to be litigated again.”
Id. at 561 (citations omitted).
    In Pye v. Department of Transportation of Georgia,
513 F.2d 290, 292 (5th Cir. 1975) the Fifth Circuit reject-
ed the argument that a state court judgment “is not final
and therefore cannot be res judicata, since the amount of
compensation has not been determined,” stating: “To be
final a judgment does not have to dispose of all matters
involved in a proceeding” (citations omitted). The court in
Pye held that lack of determination of the amount of
compensation does not negate finality for purposes of
preclusion. Id. Analogy may be drawn to determination
of the royalty for Fresenius’ post-judgment infringement.
    In Employees Own Federal Credit Union v. City of De-
fiance, 752 F.2d 243 (6th Cir. 1985), the Sixth Circuit
stated:
     [F]or purposes of issue preclusion (as distin-
     guished from merger and bar), “final judgment”
     includes any prior adjudication of an issue in an-
     other action that is determined to be sufficiently
     firm to be accorded conclusive effect.
Id. at 245 (citation omitted). The court, in discussing
“general principles of res judicata,” stated that an “ad-
verse judgment” following a “full and fair opportunity to
litigate” is preclusive; “[o]ne bite at the apple is
enough.” Id.
 FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.        19
    The Seventh Circuit in Miller Brewing Co. v. Joseph
Schlitz Brewing Co., 605 F.2d 990 (7th Cir. 1979), agreed
that collateral estoppel does not require §1291 finality:
    To be “final” for purposes of collateral estoppel the
    decision need only be immune, as a practical mat-
    ter, to reversal or amendment. “Finality” in the
    sense of 28 U.S.C. §1291 is not required.
Id. at 996. The Eighth Circuit in Robinette v. Jones, 476
F.3d 585 (8th Cir. 2007) found finality for issue preclusion
purposes where the quantum of damages had not yet been
determined, the court stating:
    [T]he finality requirement for issue preclusion has
    become less rigorous. Recent decisions have re-
    laxed traditional views of the finality requirement
    in the collateral estoppel context by applying the
    doctrine to matters resolved by preliminary rul-
    ings or to determinations of liability that have not
    yet been completed by an award of damages or
    other relief, let alone enforced.
Id. at 589 (citation omitted).
     In John Morrell & Co. v. Local Union 304A of United
Food & Commercial Workers, 913 F.2d 544 (8th Cir.
1990), the court held that preclusion can apply “to mat-
ters resolved by preliminary rulings or to determinations
of liability that have not yet been completed by an award
of damages or other relief.” Id. at 564 (citation omitted).
The court observed that “[b]oth parties presented abun-
dant evidence on the issue at trial, and both had strong
incentives to litigate the issue fully. Furthermore, the
jury’s verdict addressed the exact issue which the arbitra-
tor chose to reconsider.” Id.
    So it is here. Fresenius and Baxter both had “strong
incentives to litigate” validity, and did so through trial
and appeal. The district court’s judgment and our judg-
ment on appeal “addressed the exact issue which the
20         FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
[PTO] chose to reconsider.” The PTO cannot override this
court’s judgment, although post-judgment damages
remained to be resolved.
    The Ninth Circuit in Syverson v. International Busi-
ness Machines Corp., 472 F.3d 1072 (9th Cir. 2007) held
that preclusion arose as to issues that were finally decid-
ed, although other aspects of the merits had been re-
manded:
     [T]he proper query here is whether the court’s de-
     cision on the issue as to which preclusion is
     sought is final.
Id. at 1079 (internal citation omitted). See Clements v.
Airport Auth. of Washoe Cnty., 69 F.3d 321, 330 (9th Cir.
1995) (“Where the plaintiffs have had a full and fair
opportunity to actually litigate the issue and did in fact
litigate it, they cannot ordinarily be prejudiced by subse-
quently being held to the prior determination.”).
    The Tenth Circuit in Smith Machine Co. v. Hesston
Corp., 878 F.2d 1290, 1293 (10th Cir. 1989) discussed the
“conclusive effect” as to the “specific issue” for which
estoppel or law of the case preclusion was sought:
     Courts also require a prior final judgment, at least
     on the specific issues sought to be foreclosed from
     relitigation, before a party may invoke collateral
     estoppel or law of the case.
Id. at 1293 (citing Employees Own, 752 F.2d at 245 (“re-
laxation of final judgment rule in collateral estoppel
context appropriate in civil case when prior decision is
‘sufficiently firm to be accorded conclusive effect.’”).
    The Eleventh Circuit in Christo v. Padgett, 223 F.3d
1324 (11th Cir. 2000) mentioned the “widely recognized”
rule of issue preclusion:
     The Christos argue that the July 13 order cannot
     have preclusive effect because it was not a final
 FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.         21
    judgment. Technically, the Christos’ assessment
    of the July 13 order is correct . . . . [However] [i]t
    is widely recognized that the finality requirement
    is less stringent for issue preclusion than for claim
    preclusion.
Id. at 1338–39 (citations omitted).
   The D.C. Circuit in Martin v. Department of Justice,
488 F.3d 446 (D.C. Cir. 2007) discussed issue preclusion
based on a district court’s adjudication:
    It is well established that a lower court judgment
    may have preclusive effect despite the lack of ap-
    pellate review. “For purposes of issue preclusion . .
    . ‘final judgment’ includes any prior adjudication
    of an issue in another action that is determined to
    be sufficiently firm to be accorded conclusive ef-
    fect.”
Id. at 455 (citations omitted, ellipse in original).
    All of the circuits follow this approach, as did the Fed-
eral Circuit. In Interconnect Planning Corp. v. Feil, 774
F.2d 1132 (Fed. Cir. 1985) this court stated:
    Considering the finality issue, for collateral estop-
    pel to arise the prior decision need not have been
    final in the sense of 28 U.S.C. § 1291 but, in the
    words of the Restatement, the prior adjudication
    must have been “sufficiently firm to be accorded
    conclusive effect.”
Id. at 1135.
    In Block v. U.S. International Trade Commission, 777
F.2d 1568 (Fed. Cir. 1985) this court summarized the
criteria for purposes of issue preclusion:
    One important factor that is considered in deter-
    mining the finality of a decision for the purposes
    of preclusion is whether the decision was ever
22         FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
     subject to appeal. In Lummus Co., 297 F.2d at 89,
     Judge Friendly stated that whether a “non-final”
     judgment “ought nonetheless be considered ‘final’
     in the sense of precluding further litigation of the
     same issue, turns upon such factors as the nature
     of the decision (i.e., that it was not avowedly ten-
     tative), the adequacy of the hearing, and the op-
     portunity for review.”
Id. at 1571–72 (citations omitted).
    Despite this heavy and uniform weight, my colleagues
insist that no appellate judgment is final as to any issue
finally decided, if there is a remand on a different aspect
of the case. That doctrinaire approach has been rejected
throughout the federal system, and explicitly with respect
to damages, for post-judgment damages was the issue
here on remand. 3


     3  My colleagues seek support in the Restatement
(Second) of Judgments, maj. op. 30–31, but there is none
to be found. Both provisions cited (but not quoted) by the
panel majority state the principle, universally understood,
that “when two actions are pending which are based on
the same claim, or which involve the same issue, it is the
final judgment first rendered in one of the actions which
becomes conclusive in the other action.” Restatement
(Second) of Judgments §14 cmt. a (1982); see §27 cmt. l
(“If two actions which involve the same issue are pending
between the same parties, it is the first final judgment
rendered in one of the actions which becomes conclusive
in the other action, regardless of which action was
brought first.”). The “final judgment first rendered” in
this matter is the final judgment of validity and infringe-
ment rendered in 2009, see Fresenius I. That final judg-
ment is “conclusive.” §14 cmt. a; §27 cmt. l. That is the
final judgment that the court now holds is negated by the
later ruling of the administrative agency.
 FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.       23
     Finality for preclusion purposes when the issue of
damages remained for determination, has been consid-
ered in several factual contexts, as discussed supra. In
Zdanok the court stated that “[t]he mere fact that the
damages of the [first] plaintiffs have not yet been as-
sessed should not deprive that ruling of any effect as
collateral estoppel it would otherwise have,” for the
decision was “final on the hotly contested issue of liabil-
ity.” 327 F.2d at 955. See also, e.g., Metromedia Co. v.
Fugazy, 983 F.2d 350 (2d Cir. 1992):
    The mere fact that the damages awarded to the
    plaintiff have not been yet calculated, though
    normally precluding an immediate appeal, . . .
    does not prevent use of a final ruling on liability
    as collateral estoppel.
Id. at 366 (citation omitted); In re Docteroff, 133 F.3d 210,
215–16 (3d Cir. 1997) (“[A]pplication of collateral estoppel
does not require the type of finality urged by Docteroff . . .
. The [prior] judgment is sufficiently final. Indeed, there
is nothing which would even suggest that that court has
any intention of revisiting the issue of liability, that its
findings are unreliable” although a “trial on damages”
had yet to occur.); In re Nangle, 274 F.3d 481, 484–85 (8th
Cir. 2001) (collateral estoppel may apply “to matters
resolved by preliminary rulings or to determinations of
liability that have not yet been completed by an award of
damages or other relief, let alone enforced”); B. Willis,
C.P.A., Inc. v. BNSF Ry. Corp., 531 F.3d 1282, 1301 n.24
(10th Cir. 2008) (“While the entire eminent domain pro-
ceeding is not yet final, because the state courts are still
considering the amount of compensation to which Willis is
entitled for the easement, that fact is of no moment [to
the preclusion analysis] because the claims that Willis
asserts in this federal action do not implicate the adequa-
cy of the compensation award.”).
24        FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
    Here, Fresenius contested liability and lost, by de-
claratory action brought in the district court, and on
appeal to the Federal Circuit. All that remained on
remand was an updating of the post-judgment royalty.
The judgment of validity of the ’434 patent was not sub-
ject to redetermination, and was final in all aspects
relevant to the PTO reexamination proceedings. The
remand for post-judgment royalty had no impact on
patent validity.
    The panel majority states that this court’s final judg-
ment of validity and infringement, including damages to
the date of judgment—adjudged by this court in 2009—
was not “final” because the district court declined to grant
Baxter’s motions for execution of past damages during the
remand for determination of post-judgment damages. On
Baxter’s first motion, filed on August 16, 2011, the district
court explained that the motion was “premature” because
Fresenius had requested a new trial on past damages and
the court had scheduled a hearing on this issue for De-
cember 2, 2011. Fresenius USA, Inc. v. Baxter Int’l, Inc.,
No. 03-CV-1431 (N.D. Cal. Sept. 20, 2011), ECF No. 1117.
The district court denied Fresenius’ motion for a new trial
on past damages, stating “Nothing in the mandate in this
case indicates that damages for infringement was an
issue for remand.” Order at *4, Fresenius USA, Inc. v.
Baxter Int’l, Inc., No. 03-CV-1431 PJH, 2011 WL 2160609
(N.D. Cal. May 26, 2011). Neither validity nor infringe-
ment was involved in this motion for a new trial.
    After the district court adjudicated the post-judgment
royalties on remand, Fresenius filed the appeal now
before us, on this question, and requested that execution
be delayed during the appeal, offering to file a super-
sedeas bond. Meanwhile, the patent had expired. The
district court accepted the bond offer, and stayed execu-
tion of the judgment pending appeal. Fresenius USA, Inc.
v. Baxter Int’l, Inc., No. 03-CV-1431 (N.D. Cal. May 3,
2012), ECF No. 1157. None of these events overtook this
 FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.      25
court’s final adjudication of validity and infringement in
2009. These aspects were not at issue in the remand.
    The panel majority irrelevantly states that “[r]eversal
and remand for further proceedings on the entire case
defeats preclusion entirely until a new final judgment is
entered by the trial court or the initial judgment is re-
stored by further appellate proceedings,” citing G. & C.
Merriam Co. v. Saalfield, 241 U.S. 22, 28, 29 (1916).
There was no “reversal and remand for further proceed-
ings on the entire case,” id. Validity, infringement, and
pre-judgment damages were finally decided, and were
neither reversed nor remanded; the remand related only
to post-judgment remedy.
    The Federal Circuit’s final judgment in 2009 was not
“an interim appellate decision on invalidity,” maj. op 21; it
was the final decision of validity and infringement. These
issues received no further attention, on denial of certiora-
ri. Validity was finally adjudicated, and finally resolved.
The judgment of validity is binding not only on the courts
and the parties, but also on the PTO.
    As mentioned supra, the majority relies on John
Simmons Co. v. Grier Brothers Co., 258 U.S. 82 (1922)
and Mendenhall v. Barber-Greene Co., 26 F.3d 1573 (Fed.
Cir. 1994). Simmons is inapposite, and Mendenhall
relates to litigation in the courts.
    Simmons concerned a reissue patent in which there
were conflicting decisions by the Third Circuit and the
Supreme Court on the same patent, and the district court,
which on remand was assessing damages on an unrelated
unfair competition claim, chose to follow the Supreme
Court on the patent question and thus vacated its own
prior decision. The Supreme Court approved, comment-
ing that final judgment had not been reached. 4 Simmons

    4  The Simmons court ruled that there “was not a fi-
nal decree” because “[t]he prayer for relief based upon
26         FRESENIUS USA, INC.    v. BAXTER INTERNATIONAL, INC.
raises an interesting question of the relationships among
the courts, and stands alone on the generalization for
which it is cited by my colleagues. Simmons does not hold
that executive branch agencies are not required to respect
a final judicial decision of the same issue.
     Mendenhall, too, concerns court-to-court relation-
ships. Mendenhall’s statement that “the decision was not
final until the conclusion of the accounting,” 26 F.3d at
1581, neither bars issue preclusion, nor relieves the PTO
of its obligation to separation-of-powers principles.
    We need not here explore all of the possible circum-
stances and relationships in which questions of preclusion
might arise. It cannot be debated that issue preclusion
can apply although other issues may be unresolved. The
Court has explained that both fairness to litigants and
judicial economy are served by precluding the relitigation
of matters that have been fully litigated, see Taylor v.
Sturgell, 553 U.S. 880 (2008):
     By precluding parties from contesting matters
     that they have had a full and fair opportunity to
     litigate, these two doctrines [of claim and issue
     preclusion] protect against the expense and vexa-
     tion attending multiple lawsuits, conserve judicial
     resources, and foster reliance on judicial action by
     minimizing the possibility of inconsistent deci-
     sions.
Id. at 892 (citations omitted).



infringement of patent and that based upon unfair compe-
tition in trade were but parts of a single suit in equity”
and “there can be but one final decree in a suit in equity.”
258 U.S. at 89. But see 1938 Fed. R. Civ. Pro. (Rule 2)
(abolishing the distinction between suits at law and
equity).
 FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.      27
   The only issue considered on PTO reexamination is pa-
tent validity. However, here validity of the Baxter patent
claims at issue had already been finally decided in litiga-
tion between Baxter and Fresenius. “Once a judicial
decision achieves finality, it ‘becomes the last word of the
judicial department.’” Miller, 530 U.S. at 344 (quoting
Plaut, 514 U.S. at 227). As stated in Clements:
   Vindication of this public interest is at its zenith
   in the realm of issue preclusion. It is the failure
   to adhere closely to basic issue preclusion that is
   most likely to lead directly to the inconsistent re-
   sults that tend to undermine confidence in the ju-
   dicial process.
69 F.3d at 330. My colleagues err in discarding these
venerable considerations.
    The great weight of jurisprudence and the Constitu-
tion-based proscription of executive override of judicial
decision negate the panel majority’s relapse into “tradi-
tion.” Separation-of-powers and the principles of preclu-
sion are not contrary to tradition.
                              III
                    OTHER ARGUMENTS
                  A. The Mandate Rule
    Baxter’s ’434 patent was issued on September 21,
1993. In 2003 Fresenius filed a declaratory judgment
action, seeking declaration of invalidity and non-
infringement of three Baxter patents including claims 26–
31 of the ’434 patent. That suit proceeded through dis-
covery, motions, trials, and decision. On February 13,
2007 the district court entered final judgment that the
three Baxter patents are valid and infringed, and as-
sessed damages to the date of judgment. The district
court’s final judgment is reported at Fresenius USA, Inc.
28        FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
v. Baxter International, Inc., No. 03-CV-1431 SBA, 2007
WL 518804 (N.D. Cal. Feb. 13, 2007).
    On appeal, the Federal Circuit ruled on September 10,
2009 that claims 26–31 of the ’434 patent are valid and
infringed, and that the two other Baxter patents in suit
are invalid. The court remanded to the district court to
assess post-judgment remedy. The mandate issued on
November 25, 2009. Fresenius USA, Inc. v. Baxter Int’l,
Inc., 582 F.3d 1288 (Fed. Cir. 2009). 5
     In 2005 Fresenius had filed with the PTO a request
for reexamination of the ’434 patent. Fresenius cited
references and provided argument that claims 26–31 are
invalid on the ground of obviousness. On March 18,
2010—nearly four months after our mandate issued—the
PTO Board of Patent Appeals and Interferences held that
claims 26–31 of the ’434 patent are invalid. This decision
was appealed to the Federal Circuit, and this court af-
firmed. This court justified its conflict with its 2009
decision by stating that it was applying different stand-
ards of review—although obviousness is a question of law.
That mandate issued on November 2, 2012. In re Baxter
Int’l, Inc., 679 F.3d 1357 (Fed. Cir. 2012); reh’g en banc
denied, 698 F.3d 1349 (Fed. Cir. 2012).
    The panel majority incorrectly states that: “We af-
firmed the PTO’s determination in the reexamination
proceeding and our mandate issued. Meanwhile the
district court entered judgment against Fresenius in the
pending infringement proceedings.” Maj. op. 2. That is

     5   On remand, the district court declined to stay the
damages proceeding until completion of the ongoing PTO
reexamination; the court stating that “the effect on this
litigation of any final action on the reexamined ’434
patent is far from clear.” Order at *2, Fresenius USA, Inc.
v. Baxter Int’l, Inc., No. 03-CV-1431 PJH, 2011 WL
2160609 (N.D. Cal. May 26, 2011).
 FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.     29
incorrect. The infringement proceedings were over in the
district court and on appeal to the Federal Circuit, includ-
ing petitions for rehearing and for certiorari. The Federal
Circuit’s final judgment and mandate issued in 2009.
There were no infringement proceedings pending when
we affirmed the PTO’s reexamination decision in 2012;
and that affirmation makes no mention of any pending
infringement proceeding.
    The remand to assess post-judgment royalty did not
affect the final adjudication of validity. When validity
was finally decided by the Federal Circuit in 2009, this
was “the last word of the judicial department with regard
to [the] particular . . . controversy.” Plaut, 514 U.S. at
227. When the mandate includes a remand to consider a
specific issue, other issues cannot be reopened. See, e.g.,
Amado v. Microsoft Corp., 517 F.3d 1353, 1360 (Fed. Cir.
2008) (on any subsequent appeal in the same case, “any
issue within the scope of the judgment [previously] ap-
pealed from—not merely those issues actually raised—”
cannot be reconsidered); Engel Indus., Inc. v. Lockformer
Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999) (“[I]ssues actual-
ly decided—those within the scope of the judgment ap-
pealed from, minus those explicitly reserved or remanded
by the court—are foreclosed from further consideration.”);
Laitram Corp. v. NEC Corp., 115 F.3d 947, 951 (Fed. Cir.
1997) (“Upon return of its mandate, the district court
cannot give relief beyond the scope of that mandate.”).
    The district court so recognized, and after our remand
to determine post-judgment damages, the district court
rejected Fresenius’ request to reopen the entire issue of
damages, stating: “Nothing in the mandate in this case
indicates that damages for infringement was an issue for
remand, and nothing suggests that this court should
consider new evidence.” Order at *4, Fresenius USA, Inc.
v. Baxter Int’l, Inc., No. 03-CV-1431 PJH, 2011 WL
2160609 (N.D. Cal. May 26, 2011). See Sprague v. Ticonic
Nat’l Bank, 307 U.S. 161, 168 (1939) (an appellate court’s
30        FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
“mandate is controlling as to matters within its com-
pass”).
            B. The Flawed Statutory Analogy
    My colleagues now reject the mandate rule, the rules
of issue preclusion and estoppel, and all other rules of
finality, stating the position that since the matter of post-
judgment royalty was receiving attention on remand,
there is no finality, and thus no obligation on the PTO to
respect finality of adjudication. In support of this theory
my colleagues draw analogy to statutory change, stating
that “We have held that a new statute enacted even after
a final decision on appeal is applicable in a pending case,
so long as our mandate ending the litigation has not yet
issued.” Maj. op. 28. The majority cites GPX Internation-
al Tire Corp. v. United States, 678 F.3d 1308, 1312 (Fed.
Cir. 2012) as authority for the argument that a PTO
reexamination decision is like a newly enacted law, and
overrides a prior final judicial determination.
    I again note that the mandate ending this litigation
had indeed issued—contrary to the majority’s statements.
GPX Tire supports not my colleagues’ argument, but the
contrary position. In GPX Tire the court confirmed that
after the mandate has issued the court’s decision is final,
and is not subject to the “new statute,” whatever the
content of the new statute. Id. at 1310.
    As discussed in Qualcomm Inc. v. FCC, 181 F.3d 1370
(D.C. Cir. 1999), after a final judgment has been ren-
dered, that judgment cannot be altered by legislative
change, even if an aspect of the case was pending on
remand when the legislation was enacted. The Qual-
comm court explained that allowing newly enacted legis-
lation to disturb a court’s decision would “pose a
constitutional question of whether Congress could change
the result of a final judicial decision.” Id. at 1375 (citing
Plaut, 514 U.S. at 240).
 FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.     31
    The Qualcomm court elaborated that “the separation
of powers doctrine embedded in the Constitution protects
the final judgments of Article III courts from legislative
interference,” id. at 1379; the court warning that: “By
passing retroactive legislation affecting a case already
finally adjudicated, Congress had circumvented the
fundamental principle that the judicial power includes the
authority to render dispositive judgments, and had thus
violated the principle of separation of powers.” Id. (cita-
tions omitted).
    The separation of powers doctrine protects judicial
rulings, and the public, from executive as well as legisla-
tive interference. The panel majority attempts to blunt
the force of the Qualcomm reasoning, arguing that in
Qualcomm “the appellate mandate in question was not
‘simply for further proceedings,’ but ordered specific,
immediate relief for a party.” Maj. op. 28 n.12. The
remand in Qualcomm instructed the FCC to conduct
further proceedings to determine whether to grant Qual-
comm a “pioneer’s preference” and to identify any “alter-
native relief.”     Id. at 1377.    This “vague” remand
instruction “recognized that alternative relief remained to
be identified. . . .” and did not decide the issue of Qual-
comm’s preference “per se.” Id.
    Similarly, the remand in our Fresenius decision was
not for generalized further proceedings in the district
court; the remand was specifically to apply a royalty to
Fresenius’ post-judgment infringement. The remand did
not require, and did not permit, redetermination of the
issues that had been finally decided.
    The majority attempts to distinguish the Qualcomm
decision on its facts, stating that there “the judiciary had
entered ‘a final judgment entitling QUALCOMM to a
preference,’” maj. op. 28 n.12, and that “[b]ecause of the
finality of the earlier decision. . . the legislation was
construed to be inapplicable.” Id. But the Qualcomm
32          FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
judgment left both the merits of Qualcomm’s “pioneer
preference” and other “alternative relief” to be decided on
remand, 181 F.3d at 1377; this judgment certainly would
not be “final” under the majority’s standard: The Qual-
comm judgment did not “end[] the litigation on the merits
and leave[] nothing for the court to do but execute the
judgment.” Maj. op. 20 (quoting Mendenhall, 26 F.3d at
1580). Moreover, the Qualcomm judgment left “the scope
of relief . . . to be determined.” Maj. op. 20. There is no
basis in fact or law to hold that our decision in Fresenius I
is any less final than that considered in Qualcomm.
    The strained analogy of a PTO reexamination decision
to statutory change does not overcome the finality of
judgment of issues that had already been finally decided
by the court.
              C. The Flawed Reissue Analogy
    I comment on the majority’s analogy to patent reissue
law. The majority states that the reissue statute author-
izes the PTO to ignore final judicial rulings, citing the
“intervening rights” provision. The majority proposes
that since “the reexamination statute provides that reex-
amined claims ‘have the same effect [in pending litiga-
tion] as that specified in § 252 of this title for reissued
patents.’ 35 U.S.C. § 307(b),” this means that PTO reex-
amination is liberated from the Constitution. Maj. op. 10
(brackets in original).
    This theory not only misstates the reexamination
statute, but taints the reissue statute. Reexamination
section 307(b) states:
     § 307(b). Any proposed amended or new claim de-
     termined to be patentable and incorporated into a
     patent following a reexamination proceeding will
     have the same effect as that specified in section
     252 of this title for reissued patents on the right of
     any person who made, purchased, or used within
 FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.        33
   the United States, or imported into the United
   States, anything patented by such proposed
   amended or new claim, or who made substantial
   preparation for the same, prior to issuance of a
   certificate under the provisions of subsection (a) of
   this section.
Section 307(b) provides for intervening rights, which arise
when there is an “amended or new claim” resulting from
the reexamination. In this case, however, there is no
amended or new claim. The relevance of the panel major-
ity’s argument is obscure, for the intervening rights
provision of the reissue statute does not authorize the
PTO to review, override, or deny full faith and credit to
judicial rulings.
    Both reissue and reexamination are remedial in na-
ture, and both protect persons who relied on earlier forms
of changed claims. In Aspex Eyewear, Inc. v. Marchon
Eyewear, Inc., 672 F.3d 1335 (Fed. Cir. 2012) the court
explained that
   claims that emerge from reexamination do not
   create a new cause of action that did not exist be-
   fore. We therefore reject Aspex’s argument that
   the issuance of [amended and new claims] had the
   effect of negating the res judicata effect of the pri-
   or litigation [of the original claims].
Id. at 1341–42 (internal citations omitted). The “res
judicata effect” in Aspex tracks the issue preclusion effect
in this case. The panel majority’s extensive analysis of
the reissue statute neglects to mention that the claims
here at issue were unchanged during reexamination, and
that since 1928 such claims retained their original effect
upon reissue of the patent. The proposal that reissue law
supports the dominance of a PTO reexamination decision
over a prior adjudication in the courts is a needless dis-
traction.
34        FRESENIUS USA, INC.   v. BAXTER INTERNATIONAL, INC.
                         SUMMARY
    The court’s ruling that PTO reexamination overrides
the prior adjudication of patent validity is contrary to the
legislative purposes of reexamination, offensive to princi-
ples of litigation finality and repose, and violative of the
Constitution. The judicial decision of patent validity is
not available for review, revision, or annulment by the
PTO. When the issue of patent validity has been litigated
and finally decided in the courts, this binds not only other
courts, the parties, and the public; it binds the other
branches of government. From the court’s contrary
decision, I respectfully dissent.
