BECTON, DICKINSON AND COMPANY v. BAXTER CORPORATION ENGLEWOOD, Appeal No. 2020-1937 (Fed. Cir. May 28, 2021). Before Prost, Clevenger, and Dyk. Appealed from the Patent Trial and Appeal Board.  (Obviousness; Prior Art)


Baxter owned a patent directed to managing medication dose orders and preparing medication doses, including remote dose inspection for facilitating the practice of telepharmacy. Becton petitioned for inter partes review of claims, and argued that the claims were invalid as being obvious in view of a combination of three references.

Baxter argued that the primary reference was not prior art under pre-AIA 35 U.S.C. § 102(e)(2) because all of the claims in the reference were cancelled after an inter partes review. Because the grant of the reference had been revoked, Baxter argued that it could no longer qualify as a patent granted as required for prior art status. The Board disagreed and determined that the reference was prior art.

However, the Board found that the primary reference did not render obvious a verification limitation, which the Board construed to mean that the system will not allow the operator to proceed to the next step of drug preparation until the prior step has been verified. The Board was persuaded that the reference only discusses that a remote pharmacist may verify each step and not that the remote pharmacist must verify each and every step before the operator is allowed to proceed.

The Board concluded that the claims were not shown to be unpatentable. Becton appealed.


(1)       Did the Board err in finding that the primary reference was prior art under pre‑AIA 35 U.S.C. § 102(e)(2)?

(2)       Did the Board err in finding that the claims were not rendered obvious? (continue reading)

Summary by:  Paige Soon

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