Obviousness in View of Canceled Claims

| Hans L. Mayer


Before Prost, Clevenger, and Dyk. Appeal from the Patent Trial and Appeal Board.

Summary: A patent that has issued and subsequently been canceled may be cited as a reference in an IPR.

Becton Dickinson (BD) requested Inter Partes Review of Baxter’s patent directed to enabling a remote pharmacist to manage a technician’s preparation of drugs. The PTAB found the challenged claims not invalid because the limitations of requiring “verification” from the pharmacist at each step before proceeding, and enabling “highlighting” of each step to prompt the display of more information, were not taught or rendered obvious by the cited prior art.

The Federal Circuit held that the PTAB’s findings were not supported by substantial evidence and reversed. The Federal Circuit also addressed Baxter’s alternative ground raised on appeal – that the U.S. patent asserted by BD was not prior art under 35 U.S.C. § 102(e)(2) (pre-AIA) because all claims of that patent were canceled in an IPR. The Federal Circuit rejected that argument and noted that the statute requires only that a grant has occurred, not that the patent is currently valid.

Editor: Paul Stewart