Wednesday, June 02, 2021

Becton Dickinson obtains reversal of PTAB in case over US 8,554,579

The outcome:

Becton, Dickinson and Company (“Becton”) appeals a decision from the Patent Trial and Appeal Board (“Board”), determining that certain claims of U.S. Patent No. 8,554,579 (“the ’579 patent”) were not invalid as obvious. We reverse.

BACKGROUND Baxter Corporation Englewood (“Baxter”) is the owner of the ’579 patent, which is directed to “[s]ystems for preparing patient-specific doses and a method for telepharmacy in which data captured while following [a protocol associated with each received drug order and specifying a set of steps to fill the drug order] are provided to a remote site for review and approval by a pharmacist.” ’579 patent,


As an alternative ground to affirm the Board’s determination of non-obviousness, Baxter argues that the Board erred in determining that Alexander is prior art under 35 U.S.C. § 102(e)(2) (pre-AIA).5 This section provides that “[a] person shall be entitled to a patent unless . . . the invention was described in . . . a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent.” 35 U.S.C. § 102(e)(2).6

Baxter contends that Alexander nonetheless is not prior art because all claims in Alexander (granted on February 12, 2013) were cancelled on February 15, 2018, following inter partes review. Baxter argues that “because the Alexander ‘grant’ had been revoked, it can no longer qualify as a patent ‘granted’ as required for prior art status under Section 102(e)(2).” Appellee’s Br. 35.7 The text of the statute requires only that the patent be “granted,” meaning the “grant[]” has occurred. 35 U.S.C. § 102(e)(2) (pre-AIA). The statute does not require that the patent be currently valid.


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