Terumo BCT, Inc. v. Haemonetics Corporation

This Inter Partes Review (IPR) proceeding, IPR2025-01374, involves two prominent operating companies in the medical technology sector: Terumo BCT, Inc. as the Petitioner, and Haemonetics Corporation as the Patent Owner. Terumo BCT, a subsidiary of Terumo Corporation, specializes in automated blood collection systems, therapeutic apheresis, and cell therapy technologies, providing products and services for processing blood and cells. Haemonetics Corporation is a global provider of blood and plasma supplies and services, known for developing and manufacturing automated equipment for collecting and processing blood and blood products, including solutions for blood donation, plasma collection, and surgical blood management. Both companies are direct competitors in the blood and plasma processing market.

The IPR challenges the validity of U.S. Patent No. 11,738,124, titled "SYSTEM AND METHOD FOR MEASURING A VOLUME OF PURE PLASMA PRODUCED FROM A BLOOD DONATION." This patent generally describes a system and method for precisely measuring the volume of pure plasma obtained from a blood donation by utilizing a measurement assembly that interacts with a plasma-holding container and a processing unit to determine the volume based on detected characteristics. The IPR is directly linked to an underlying patent infringement lawsuit, Haemonetics Corporation v. Terumo BCT, Inc. (1:25-cv-01409), filed in the District of Colorado on May 5, 2025. In that district court case, Haemonetics alleges that Terumo BCT's Rika Plasma Donation System™ infringes the '124 patent, among others.

The procedural posture of this case is before the USPTO Patent Trial and Appeal Board (PTAB), under case number IPR2025-01374, having been filed on August 4, 2025. While the PTAB initially instituted the review on January 27, 2026, the Director of the USPTO issued a notable decision on May 12, 2026, vacating the institution of the IPR. This decision was designated as "informative" and was based on Terumo BCT's conduct of advancing inconsistent indefiniteness arguments in the parallel district court litigation after institution, only offering to withdraw them after the inconsistency was brought to the Office's attention. This case is particularly notable for this Director-level intervention, highlighting the PTAB's discretionary power under 35 U.S.C. § 314(a) to deny or vacate institution where a petitioner's actions in parallel proceedings are deemed inconsistent or intended to create duplication, thus shaping strategic considerations for parties engaging in both IPRs and district court litigation.

The case "Terumo BCT, Inc. v. Haemonetics Corporation" (IPR2025-01374) is an Inter Partes Review (IPR) proceeding at the USPTO Patent Trial and Appeal Board (PTAB) challenging the validity of US patent 11,738,124. This IPR is proceeding in parallel with a patent infringement lawsuit filed by Haemonetics Corporation against Terumo BCT, Inc. in federal district court.

Here are the key legal developments in chronological order for both the parallel district court litigation and the IPR:

Parallel District Court Litigation: Haemonetics Corporation v. Terumo BCT, Inc., Case No. 1:25-cv-01409 (D. Colo.)

• 2024-10-01: Notice of Alleged Infringement. Haemonetics' counsel sent a letter to Terumo BCT, Inc., detailing infringement allegations concerning several patents, including US Patent No. 11,738,124.
• 2025-05-05: Complaint Filed. Haemonetics Corporation filed a patent infringement complaint against Terumo BCT, Inc. in the U.S. District Court for the District of Colorado, initiating Case No. 1:25-cv-01409. The complaint alleges that Terumo BCT directly and indirectly infringes nine patents, including US Patent No. 11,738,124, through the making, using, selling, and offering for sale of its Rika Plasma Donation System™. Haemonetics seeks damages of no less than a reasonable royalty for the alleged infringement.
• Initial Pleadings: Terumo BCT denies infringement, asserts that the claims of the asserted patents are invalid under 35 U.S.C. §§ 101, 102, 103, and 112, and unenforceable due to doctrines such as unclean hands, patent misuse, and inequitable conduct. Terumo BCT also indicated an intention to raise counterclaims.
• Present Posture: The district court case is ongoing and in its early stages. There is no public record of significant pre-trial motions, claim construction, or trial events yet. Given the recent institution of a related IPR, a motion to stay the district court litigation pending the outcome of the IPR would be a common strategic move, though such a motion is not yet publicly detailed in the provided search results.

Parallel PTAB IPR Proceeding: Terumo BCT, Inc. v. Haemonetics Corporation, IPR2025-01374

• 2025-08-04: IPR Petition Filed. Terumo BCT, Inc. filed an Inter Partes Review (IPR) petition (IPR2025-01374) with the USPTO Patent Trial and Appeal Board (PTAB), challenging the validity of US Patent No. 11,738,124, owned by Haemonetics Corporation.
• 2026-01-27: Institution of IPR. The PTAB instituted the IPR proceeding (IPR2025-01374). This means the PTAB found that Terumo BCT demonstrated a reasonable likelihood that at least one claim of US Patent No. 11,738,124 is unpatentable, and the review will now proceed to a merits phase. The institution decision occurred despite recent USPTO policy changes in March 2025, which introduced a bifurcated review process and emphasized discretionary denials based on factors like parallel district court litigation (often referred to as Fintiv factors) and workload management. The institution of this IPR suggests that the PTAB either found that the Fintiv factors did not weigh heavily enough against institution, or that Terumo BCT presented compelling evidence of unpatentability sufficient to overcome any discretionary denial considerations.
• Present Posture: The IPR is currently pending before the PTAB. A Final Written Decision on the patentability of the challenged claims is expected within approximately one year of the institution date, unless extended for good cause.

Effect of IPR on Litigation:
The institution of IPR2025-01374 could significantly impact the ongoing district court litigation (1:25-cv-01409). It is common for district courts to stay infringement proceedings pending the outcome of an IPR, particularly when the IPR has been instituted on the same patent claims. This allows the PTAB, which specializes in patent validity, to resolve the patentability questions first, potentially simplifying or mooting aspects of the district court case. The recent USPTO interim processes for PTAB workload management (March 2025) and associated guidance (June-November 2025) also highlight the interplay between IPRs and parallel district court cases, particularly regarding discretionary denials based on factors like the schedule of the district court trial and the overlap of issues. The fact that the IPR was instituted suggests that, at least for patent 11,738,124, the PTAB found it appropriate to proceed with a validity review.

Terumo BCT, Inc. is represented by the following counsel in IPR2025-01374 and related patent litigation:

• John Caracappa

  • Role: Likely lead counsel, given his appearance in both the IPR-related documents and the parallel district court case.
  • Firm: Information not explicitly found in direct relation to IPR2025-01374, but he has been identified as counsel for Terumo BCT in related proceedings.
  • Note: John Caracappa represented Terumo BCT in a Rule 26(f) meeting in the related district court case, Haemonetics Corp. v. Terumo BCT, Inc. (1:25-cv-01409). He is also listed as "Petitioner Counsel, Caracappa, John et al." in another PTAB proceeding involving the same parties, PGR2026-00006.

• Katherine Cappaert

  • Role: Counsel
  • Firm: Information not explicitly found in direct relation to IPR2025-01374, but she has been identified as counsel for Terumo BCT in related proceedings.
  • Note: Katherine Cappaert represented Terumo BCT in a Rule 26(f) meeting in the related district court case, Haemonetics Corp. v. Terumo BCT, Inc. (1:25-cv-01409).

• Anthony Pericolo

  • Role: Counsel
  • Firm: Information not explicitly found in direct relation to IPR2025-01374, but he has been identified as counsel for Terumo BCT in related proceedings.
  • Note: Anthony Pericolo represented Terumo BCT in a Rule 26(f) meeting in the related district court case, Haemonetics Corp. v. Terumo BCT, Inc. (1:25-cv-01409).

The specific roles (lead, of counsel, local, in-house) and firm affiliations for the IPR were not explicitly detailed in the immediately available PTAB docket snippets, beyond identifying them as counsel for Terumo BCT, Inc. in the broader context of litigation between these parties. However, their involvement in a Rule 26(f) meeting for the parallel district court case strongly suggests active representation in the overall dispute.
It is important to note that a recent Director's decision in this IPR (IPR2025-01374) vacated institution where the petitioner (Terumo BCT) advanced indefiniteness arguments in district court without sufficient justification. This indicates active counsel representation during the IPR proceedings.## Counsel for Terumo BCT, Inc. in IPR2025-01374

Terumo BCT, Inc., as the petitioner in this Inter Partes Review, is represented by the following counsel:

• John Caracappa

  • Role: Counsel (likely lead or a primary counsel for PTAB proceedings).
  • Firm: Not specified in the provided IPR docket information directly for IPR2025-01374, but he has been identified as counsel for Terumo BCT in related proceedings.
  • Experience: John Caracappa represented Terumo BCT in a Rule 26(f) meeting on July 25, 2025, in the parallel patent infringement district court case, Haemonetics Corp. v. Terumo BCT, Inc. (1:25-cv-01409), which involves the same '124 patent at issue in this IPR. He is also listed as "Petitioner Counsel" for Terumo BCT in another related PTAB proceeding, PGR2026-00006.

• Katherine Cappaert

  • Role: Counsel.
  • Firm: Not specified in the provided IPR docket information directly for IPR2025-01374, but she has been identified as counsel for Terumo BCT in related proceedings.
  • Experience: Katherine Cappaert represented Terumo BCT alongside John Caracappa and Anthony Pericolo in the Rule 26(f) meeting for the parallel district court case, Haemonetics Corp. v. Terumo BCT, Inc. (1:25-cv-01409).

• Anthony Pericolo

  • Role: Counsel.
  • Firm: Not specified in the provided IPR docket information directly for IPR2025-01374, but he has been identified as counsel for Terumo BCT in related proceedings.
  • Experience: Anthony Pericolo also represented Terumo BCT in the Rule 26(f) meeting for the parallel district court case, Haemonetics Corp. v. Terumo BCT, Inc. (1:25-cv-01409).

The above attorneys were identified through their appearance in the related district court litigation and other PTAB proceedings involving the same parties and patents, strongly indicating their involvement for Terumo BCT in the broader patent dispute, including the IPR. The PTAB docket for IPR2025-01374 references "Counsel for Terumo BCT, Inc." in an opposition brief. Furthermore, the Director of the USPTO issued a decision in this IPR on May 12, 2026, vacating institution due to inconsistent claim construction arguments by the petitioner in the IPR and a district court proceeding, confirming active representation throughout the IPR process.

Haemonetics Corporation Represented by Proskauer Rose LLP in IPR2025-01374

Haemonetics Corporation, the Patent Owner in IPR2025-01374 challenging U.S. Patent 11,738,124, was represented by attorneys from Proskauer Rose LLP. The Patent Trial and Appeal Board (PTAB) denied institution of the Inter Partes Review on May 12, 2026.

The following attorney has been identified:

• Erik B. Milch
  • Role: Attorney for Patent Owner (Lead Counsel likely, based on mandatory notice filings).
  • Firm: Proskauer Rose LLP, Washington, D.C. office.
  • Relevant Experience: Erik B. Milch is a partner in Proskauer's Intellectual Property Litigation Group and co-head of its PTAB practice. He represents both patent owners and petitioners in IPR, PGR, and CBM proceedings before the PTAB, as well as in federal district court litigation. His experience spans various technologies, including medical devices, which is relevant to the patent at issue in this case. He is consistently recognized for his expertise in patent litigation and PTAB proceedings by publications such as Chambers USA and The Legal 500.

Additional Information:

A mandatory notice filed in a related PTAB proceeding, PGR2026-00006 (also involving Terumo BCT Inc. v. Haemonetics Corp. for a patent in the same family), explicitly lists Erik B. Milch as "Attorney for Patent Owner" for Haemonetics Corporation and provides a general email address, "Haemontics_IPRs@proskauer.com," for service of documents across related IPRs, including IPR2025-01374. This indicates that Proskauer Rose LLP served as counsel for Haemonetics in IPR2025-01374 during the petition and preliminary response phase leading up to the institution decision.

While the PTAB initially set an institution date of January 27, 2026, the ultimate outcome for IPR2025-01374 was a denial of institution on May 12, 2026. This means the review did not proceed to the trial phase.