Baxter Healthcare Corporation et al v. Fresenius Medical Care Holdings Inc. et al

Filing 304

STIPULATION AND ORDER OF REMOVAL OF LIBERTY CYCLER FUNCTIONALITY RELATING TO AND DISMISSAL OF U.S. PATENTS NO. 5,438,510; 6,503,062; AND 6,808,369 re 303 Letter filed by Fresenius Medical Care Holdings Inc., Baxter International Inc., Baxter Healthcare SA, Fresenius USA Inc., Baxter Healthcare Corporation, Deka Products Limited Partnership. Signed by Judge Phyllis J. Hamilton on 5/28/09. (nah, COURT STAFF) (Filed on 5/28/2009)

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David K. Callahan, P.C. (IL 620227), [e-mail] KIRKLAND & ELLIS LLP 300 N. LaSalle Street Chicago, Illinois 60654 Telephone: [phone] Facsimile: 312-862-2200 Attorney For Plaintiffs and Counter-defendants BAXTER HEALTHCARE CORPORATION, BAXTER INTERNATIONAL INC., and BAXTER HEALTHCARE SA Maureen K. Toohey (SBN 196401), [e-mail] TOOHEY LAW GROUP, LLC One Financial Center, 15th Floor Boston, Massachusetts 02111 Telephone: [phone] Attorney for Plaintiff and Counter-defendant DEKA PRODUCTS LIMITED PARTNERSHIP Juanita R. Brooks (SBN 75934), [e-mail] FISH & RICHARDSON P.C. 12390 El Camino Real San Diego, California 92130 Telephone: [phone] Facsimile: [phone] Attorney for Defendants and Counter-claimants FRESENIUS MEDICAL CARE HOLDINGS, INC. AND FRESENIUS USA, INC. UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION BAXTER HEALTHCARE CORPORATION, BAXTER INTERNATIONAL INC., BAXTER HEALTHCARE SA, AND DEKA LIMITED PARTNERSHIP, Plaintiffs and Counter-defendants, vs. FRESENIUS MEDICAL CARE HOLDINGS, INC., d/b/a FRESENIUS MEDICAL CARE NORTH AMERICA, and FRESENIUS USA, INC., Defendants and Counter-claimants.

Case No. C 07-01359 PJH (JL) STIPULATION OF REMOVAL OF LIBERTY CYCLER FUNCTIONALITY RELATING TO, AND DISMISSAL OF, U.S. PATENTS NO. 5,438,510; 6,503,062; AND 6,808,369

STIPULATION OF REMOVAL OF LIBERTY CYCLER FUNCTIONALITY RELATING TO, AND DISMISSAL OF, U.S. PATENTS NO. 5,438,510; 6,503,062; AND 6,808,369

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WHEREAS, Defendants have removed functionality from the LibertyTM peritoneal dialysis cycler (as reflected in its current software, version 2.4.7) relating to the basis for Plaintiffs' assertion of the claims of U.S. Patents No. 5,438,510 (relating to alarms and line check) and 6,503,062 and 6,808,369 (relating to head height estimates and adjustments) as reflected in the expert reports of Jack Ganssle and William Durgin, dated April 24, 2009, and as Defendants stated in Defendants' Supplemental Responses to Baxter Plaintiffs' Interrogatories Nos. 1 and 9, dated May 12, 2009; WHEREAS, Mr. Ganssle and Dr. Durgin identified a functionality in certain versions of the LibertyTM Cycler source code, which they refer to as "static patient pressure" as meeting the limitations "and wherein the controller estimates, based on information received from the transducer, a relative elevation between the fluid control device and the distal end" recited by claim 1 of the `369 Patent, and "the controller receiving information from the transducer, estimating a relative elevation between the control device and the distal end based on the information received from the transducer" recited by claim 7 of the `369 Patent; WHEREAS, the Fresenius Defendants disagree with the opinions expressed by Mr. Ganssle and Dr. Durgin regarding the functionality they refer to as "static patient pressure," but nonetheless removed the functionality from version 2.4.7 of the LibertyTM Cycler source code and agree not to include this functionality or mere colorable variations of the functionality in the LibertyTM Cycler before the `369 Patent expires; WHEREAS, Mr. Ganssle identified a functionality in certain versions of the LibertyTM Cycler source code, which he refers to as "initial pressure offset" as meeting the limitations "calibrating the means for measuring [the] pressure" recited by claims 1 and 10 of the `062 Patent, and "calibrating the pressure transducer" recited by claims 16 and 21 of the `062 Patent. WHEREAS, the Fresenius Defendants disagree with the opinion expressed by Mr. Ganssle regarding the functionality he refers to as "initial pressure offset," but nonetheless removed the functionality from version 2.4.7 of the LibertyTM Cycler source code and agree not to include this functionality or mere colorable variations of the functionality in the LibertyTM

STIPULATION OF REMOVAL OF LIBERTY CYCLER FUNCTIONALITY RELATING TO, AND DISMISSAL OF, U.S. PATENTS NO. 5,438,510; 6,503,062; AND 6,808,369

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Cycler before the `062 Patent expires; WHEREAS, Mr. Ganssle identified a functionality in certain versions of the Liberty Cycler source code, which he refers to as "Drain rate too low," in combination with what he identifies as the "flow-based drain alarm" functionality as satisfying the limitation "means for (i) continuing system operation for a predetermined time period in response to the second alarm signal; (ii) canceling the second alarm condition without user intervention when, after the predetermined time period, system operation satisfies the second set of criteria; and (iii) initiating a first alarm condition when, after the predetermined time period, system operation fails to satisfy the second set of criteria" recited by claim 1 of the `510 Patent; WHEREAS, the Fresenius Defendants disagree with the opinion expressed by Mr. Ganssle regarding the functionality he refers to as " Drain rate too low," but nonetheless removed the functionality from version 2.4.7 of the LibertyTM Cycler source code and agree not to include this functionality or mere colorable variations of the functionality in the Liberty Cycler before the `510 Patent expires; WHEREAS, Mr. Ganssle identified functionalities in certain versions of the Liberty Cycler source code, which he refers to as "line check" and "patient line check," as satisfying the limitation "control means operative, in response to the first command signal, for operating the pumping means to attempt to move liquid in the tubing from the pumping means toward the source and, if successful, registering an empty source condition and, if not successful, registering an occluded source tubing condition" recited by claim 9 of the `510 Patent and "operating the pump mechanism in response to the first command signal to attempt to move liquid in the tubing from the pumping mechanism toward the source and, if successful, registering an empty source condition and, if not successful, registering an occluded source condition" recited by claim 20 of the `510 Patent. WHEREAS, the Fresenius Defendants disagree with the opinion expressed by Mr. Ganssle regarding the functionalities he refers to as "line check" and "patient line check," but nonetheless removed the functionalities from version 2.4.7 and earlier versions of the LibertyTM

STIPULATION OF REMOVAL OF LIBERTY CYCLER FUNCTIONALITY RELATING TO, AND DISMISSAL OF, U.S. PATENTS NO. 5,438,510; 6,503,062; AND 6,808,369

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Cycler source code and agree not to include these functionalities or mere colorable variations of these functionalities in the LibertyTM Cycler before the `510 Patent expires; and WHEREAS, separately and apart from the foregoing considerations relating to the `510, `062 and `369 patents, the parties agree to dismiss all claims and counterclaims with respect to claims 21, 22, 24, 25, 26, 28, 29 and 30 of U.S. Patent No. 5,421,823 and claim 40 of U.S. Patent No. 5,431,626;

NOW, THEREFORE, the parties and their counsel of record stipulate as follows: · Defendants agree that they will not make, use, sell, or offer for sale within the United States or import into or export from the United States any peritoneal dialysis machine with both the "Drain rate too low" functionality and the "flow-based drain alarm" functionality, the "line check" functionality, or "patient line check" functionality--or mere colorable variations of the functionality removed from the LibertyTM peritoneal dialysis cycler software --as claimed in U.S. Patent No. 5,438,510 until after the expiration of U.S. Patent No. 5,438,510; · Defendants agree that they will not make, use, sell, or offer for sale within the United States or import into or export from the United States any peritoneal dialysis machine with the "static patient pressure" or "initial pressure offset"-functionalities--or mere colorable variations of the functionality removed from the LibertyTM peritoneal dialysis cycler--as claimed in U.S. Patents No. 6,503,062 and 6,808,369 until after the expiration of U.S. Patents No. 6,503,062 and 6,808,369; · All claims, defenses and counterclaims relating to U.S. Patents No. 5,438,510; 6,503,062; and 6,808,369 shall be dismissed, without prejudice, from the instant litigation, with each party to bear its own costs and attorneys' fees as to such claims, defenses and counterclaims; · The parties agree that this stipulation is not an injunction but reserve all rights and remedies to enforce its terms; and

STIPULATION OF REMOVAL OF LIBERTY CYCLER FUNCTIONALITY RELATING TO, AND DISMISSAL OF, U.S. PATENTS NO. 5,438,510; 6,503,062; AND 6,808,369

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All of Plaintiffs' claims with respect to claims 21, 22, 24, 25, 26, 28, 29 and 30 of U.S. Patent No. 5,421,823 and claim 40 of U.S. Patent No. 5,431,626 shall be dismissed with prejudice, and all of Defendants' defenses and counterclaims with respect to such claims of the '823 and `626 patents shall be dismissed without prejudice, with each party to bear its own costs and attorneys' fees as to such claims, defenses and counterclaims.

IT IS SO ORDERED.

5/28/09 Dated: ________________________

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STIPULATION OF REMOVAL OF LIBERTY CYCLER FUNCTIONALITY RELATING TO, AND DISMISSAL OF, U.S. PATENTS NO. 5,438,510; 6,503,062; AND 6,808,369

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By: ___________________________________ DERED HONORABLE R S SO O PHYLLIS J. HAMILTON IT I United States District Judge

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STIPULATION OF REMOVAL OF LIBERTY CYCLER FUNCTIONALITY RELATING TO, AND DISMISSAL OF, U.S. PATENTS NO. 5,438,510; 6,503,062; AND 6,808,369

May 27, 2009 By: /s/ David K. Callahan /s/___________ KIRKLAND & ELLIS LLP David K. Callahan, P.C. (IL 620227) Garret Leach (pro hac vice) Mary Zaug (pro hac vice) 200 East Randolph Chicago, Illinois, 60601 Telephone: [phone] Facsimile: 312-861-2200 Robert G. Krupka (SBN 196625) 777 South Figueroa Street Los Angeles, California 90017 Telephone: [phone] Facsimile: 213-680-8500 Russell Tonkovich (SBN 233280) 555 California Street San Francisco, California, 94104 Telephone: [phone] Facsimile: 415-439-1500 Attorneys For Plaintiffs and Counter-defendants BAXTER HEALTHCARE CORPORATION, BAXTER INTERNATIONAL INC., and BAXTER HEALTHCARE SA May 27, 2009 By: /s/ Maureen K. Toohey /s/_____ Maureen K. Toohey (SBN 196401) TOOHEY LAW GROUP One Financial Center, 15th Floor Boston, Massachusetts 02111 Telephone: [phone] COBLENTZ, PATCH, DUFFY & BASS LLP Howard A. Slavitt (SBN 172840) Zuzana Ikels (St. Bar No. 208671) One Ferry Building, Suite 200 San Francisco, California 94111-4213 Telephone: [phone] Facsimile: [phone] Attorneys for Plaintiff and Counter-defendant DEKA PRODUCTS LIMITED PARTNERSHIP

May 27, 2009 By: /s/ Michael E. Florey FISH & RICHARDSON P.C. Juanita R. Brooks (SBN 75934) Todd G. Miller (SBN 163200) Michael M. Rosen (SBN 230964) 12390 El Camino Real San Diego, CA 92130 Telephone: [phone] Facsimile: [phone] Mathias W. Samuel (pro hac vice) Michael E. Florey (pro hac vice) 60 South Sixth Street, Suite 3200 Minneapolis, MN 55402 Telephone: [phone] Facsimile: [phone] Limin Zheng (SBN 226875) 500 Arguello Street, Suite 400 Redwood City, CA 94053 Telephone: [phone] Facsimile: [phone] Attorneys for Defendants and Counterclaimants FRESENIUS MEDICAL CARE HOLDINGS, INC. AND FRESENIUS USA, INC.

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ELECTRONIC FILING DECLARATION OF DAVID K. CALLAHAN, P.C.

I, David K. Callahan, declare as follows: 1. I am a partner at Kirkland & Ellis LLP, and I am Baxter Healthcare Corporation's, Baxter International Inc.'s, and Baxter Healthcare SA's legal counsel in the above-captioned litigation. 2. Pursuant to the Northern District of California Electronic Filing Procedures and General Order No. 45, I attest that Maureen K. Toohey, counsel for Plaintiff DEKA Products Limited Partnership and Michael E. Florey, counsel for Fresenius Medical Care Holdings, Inc. and Fresenius USA, Inc. concur in the filing of this document and have granted me permission to electronically file this document absent their actual signatures.

Dated: May 27, 2009

Respectfully submitted, Kirkland & Ellis LLP By: /s David K. Callahan s/ David K. Callahan, P.C. (IL 620227), [e-mail] Attorney for Plaintiffs and Counter-defendants BAXTER HEALTHCARE CORPORATION, BAXTER INTERNATIONAL INC., and BAXTER HEALTHCARE SA

STIPULATION OF REMOVAL OF LIBERTY CYCLER FUNCTIONALITY RELATING TO, AND DISMISSAL OF, U.S. PATENTS NO. 5,438,510; 6,503,062; AND 6,808,369

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