IPR decision finding Baxter’s claims nonobvious reversed due in part to erroneous claim construction

Becton, Dickinson and Company v. Baxter Corporation Englewood

Docket No. 2020-1937 (IPR2019-00119) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1937.OPINION.5-28-2021_1784040.pdf)

PROST, CLEVENGER, DYK

May 28, 2021

Brief Summary:  IPR decision of no obviousness reversed based in part on erroneous claim construction.

Summary:  Becton appealed PTAB (“Board”) IPR final written decision (FWD) finding Baxter’s US 8,554,579 regarding telepharmacy systems are not invalid for obviousness.  The claims include a “verification limitation” (“wherein each of the steps must be verified as being properly completed before the operator can continue with the other steps of drug preparation process”) and a “highlighting limitation” relevant to the determination of no obviousness.  While the Board found a motivation to combine the cited art and “that Baxter’s ‘evidence of secondary considerations [was] weak’”, it also concluded that one reference (Alexander) “did not teach or render obvious the verification limitation and that combinations of Alexander, Liff, and Morrison did not teach or render obvious the highlighting limitation”.  The Board construed the verification limitation such that “the system will not allow the operator to proceed to the next step until the prior step has been verified” (broadest reasonable interpretation (BRI) since the IPR petition was filed before Nov. 13, 2018), and that Alexander “only discusses that ‘a remote pharmacist may verify each step’; not that the remote pharmacist must verify each and every step before the operator is allowed to proceed.”  The FC panel disagreed with Board’s construction based on the plain language of the claims and specification and that “Alexander discloses systematic step-by-step review and authorization by the pharmacist.”  The FC panel also disagreed with the Board that the highlighting limitation was not disclosed by the prior art (e.g., “‘Liff discloses basic computer functionality—i.e., using prompts that can be highlighted by the operator to receive additional information—that would render the highlighting limitation obvious when applied in combination with other references,’ primarily Alexander.”)  The FC panel concluded that “[t]he Board erred in looking to Liff as the only source a person of ordinary skill would consider for what ‘additional information might be relevant’”, based in part on expert testimony (POSA “would have understood that additional information could be displayed on the tabs taught by Liff”) and KSR (US 2007 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”))  Baxter argued that “the Board erred in determining that Alexander is prior art under 35 U.S.C. § 102(e)(2) (pre-AIA)” because all of Alexander’s claims were cancelled following an IPR (“because the Alexander ‘grant’ had been revoked, it can no longer qualify as a patent ‘granted’ as required for prior art status under Section 102(e)(2)”).  The FC panel disagreed, explaining that “[t]he text of the statute requires only that the patent be ‘granted,’ meaning the ‘grant[]’ has occurred” and “does not require that the patent be currently valid.”  The FC also explained that Baxter did not sufficiently address the Board’s finding of “weak evidence of secondary considerations.”  The Board’s FWD was therefore reversed.

This entry was posted in Anticipation (35 USC 102), Claim Construction, Inter Parties Review (IPR), IPR, Obviousness, Obviousness (Secondary Considerations). Bookmark the permalink.

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