Becton, Dickinson and Company v. Baxter Corporation Englewood

998 F.3d 1337
CourtCourt of Appeals for the Federal Circuit
DecidedMay 28, 2021
Docket20-1937
StatusPublished
Cited by11 cases

This text of 998 F.3d 1337 (Becton, Dickinson and Company v. Baxter Corporation Englewood) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Becton, Dickinson and Company v. Baxter Corporation Englewood, 998 F.3d 1337 (Fed. Cir. 2021).

Opinion

Case: 20-1937 Document: 30 Page: 1 Filed: 05/28/2021

United States Court of Appeals for the Federal Circuit ______________________

BECTON, DICKINSON AND COMPANY, Appellant

v.

BAXTER CORPORATION ENGLEWOOD, Appellee ______________________

2020-1937 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2019- 00119. ______________________

Decided: May 28, 2021 ______________________

THOMAS SAUNDERS, Wilmer Cutler Pickering Hale and Dorr LLP, Washington, DC, argued for appellant. Also rep- resented by OMAR KHAN, New York, NY; KATHERINE P. KIECKHAFER, Boston, MA.

BENJAMIN EDWARD WEED, K&L Gates LLP, Chicago, IL, argued for appellee. Also represented by KATHERINE ALLOR, GEORGE C. SUMMERFIELD, JR.; MICHAEL IRA COHEN, Baxter International Inc., Deerfield, IL. ______________________

Before PROST*, CLEVENGER, and DYK, Circuit Judges.

________________________________

* Sharon Prost vacated the position of Chief Judge on May 21, 2021. Case: 20-1937 Document: 30 Page: 2 Filed: 05/28/2021

DYK, Circuit Judge. 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 pre- paring patient-specific doses and a method for telephar- macy 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, Abstract. Becton petitioned for inter partes review of claims 1– 13 and 22 of the ’579 patent. Claims 2–7 and 22 depend, directly or indirectly, from independent claim 1. Claims 9– 13 depend, directly or indirectly, from independent claim 8. The parties agree that claims 1 and 8 of the ’579 patent are illustrative. There are two contested limitations on appeal. The first is the “verification” limitation, which appears in claim 8 but not claim 1. The second is the “highlighting” limita- tion, which appears in both claims 1 and 8. The relevant portion of claim 8, containing both limitations, states: 8. A system for preparing and managing patient- specific dose orders that have been entered into a first system, comprising: ... a dose preparation station for preparing a plurality of doses based on received dose orders, the dose preparation station being in bi-directional com- munication with the order processing server and Case: 20-1937 Document: 30 Page: 3 Filed: 05/28/2021

BECTON, DICKINSON AND COMPANY v. 3 BAXTER CORPORATION ENGLEWOOD

having an interface for providing an operator with a protocol associated with each received drug order and specifying a set of drug prepara- tion steps to fill the drug order, the dose prepa- ration station including an interactive screen that includes prompts that can be highlighted by an operator to receive additional information relative to one particular step and includes areas for entering an input; . . . and wherein each of the steps must be verified as being properly completed before the operator can continue with the other steps of drug prepa- ration process, the captured image displaying a result of a discrete isolated event performed in accordance with one drug preparation step, wherein verifying the steps includes reviewing all of the discrete images in the data record . . . . Id. col. 32 l. 52–col. 33 l. 30 (highlighting and verification limitations emphasized). Claims 1 and 8 are set forth in full in an Attachment to this opinion. In asserting that the challenged claims were invalid, Becton relied primarily on three prior art references: U.S. Patent No. 8,374,887 (“Alexander”), U.S. Patent No. 6,581,798 (“Liff”), and U.S. Patent Publication No. 2005/0080651 (“Morrison”). The Board found that Becton had established that one of ordinary skill in the art would have been motivated to combine Alexander and Liff, as well as Alexander, Liff, and Morrison. The Board also determined that Baxter’s “evi- dence of secondary considerations [was] weak.” J.A. 34. However, the Board determined that 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 Case: 20-1937 Document: 30 Page: 4 Filed: 05/28/2021

Board concluded that, as a result, none of the challenged claims (1–13, 22) was shown to be unpatentable. 1 Becton appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 141(c). DISCUSSION A patent may not be obtained . . . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter per- tains. 35 U.S.C. § 103(a). 2 In reviewing the Board’s determina- tion on the question of obviousness, “[w]e review the Board’s legal conclusions de novo and its factual findings for substantial evidence.” MCM Portfolio LLC v. Hewlett- Packard Co., 812 F.3d 1284, 1293 (Fed. Cir. 2015). I We first address the verification limitation, “wherein each of the steps must be verified as being properly com- pleted before the operator can continue with the other steps of drug preparation process.” ’579 patent, col. 33 ll. 18–21. The Board construed the limitation under the broadest

1 The Board also found that the challenged claims were not shown to be unpatentable on a separate third ground asserted by Becton, which Becton does not appeal. 2 Congress amended § 103 when it enacted the Leahy-Smith America Invents Act (“AIA”). Pub. L. No. 112-29, § 3(c), 125 Stat. 284, 287 (2011). However, because the challenged claims of the ’579 patent have an effective filing date before March 16, 2013, the pre-AIA version of § 103 applies. See id. § 3(n)(1), 125 Stat. at 293. Case: 20-1937 Document: 30 Page: 5 Filed: 05/28/2021

BECTON, DICKINSON AND COMPANY v. 5 BAXTER CORPORATION ENGLEWOOD

reasonable interpretation standard. 3 Under the Board’s construction, which neither party appeals, the verification limitation requires that “the system will not allow the op- erator to proceed to the next step until the prior step has been verified.” J.A. 17. The Board further determined that the plain language of the verification limitation does not require “automatic system function” to “trigger verifica- tion.” Id. 4 The Board determined that Alexander does not teach or render obvious the verification limitation. Specifically, the Board found persuasive Baxter’s argument that Alex- ander “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.” See id. at 36–37 (quoting id. at 5284) (citation and empha- sis omitted). We conclude that the Board’s determination is not supported by substantial evidence.

3 Because the filing date of the petition for inter partes review, October 29, 2018, was before November 13, 2018, the broadest reasonable interpretation standard ap- plies.

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