Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Becton, Dickinson and Co. v. Baxter Corp. Englewood, No. 20-1937 (May 28, 2021), reversing the decision of the Patent Trial and Appeal Board finding Baxter’s telepharmacy patent not invalid.
Baxter’s U.S. Patent No. 8,554,579 is directed to a computer system that allows a pharmacist to remotely review and verify that drug preparation steps were preformed properly before a prescription is released to a patient. Becton petitioned for inter partes review (IPR) asserting that Baxter’s patent claims were invalid as obvious over a combination of three prior art references: Alexander, Liff, and Morrison. In the IPR, although the Board found that a person of ordinary skill in the art (POSA) would have been motivated to combine the references and that Baxter’s evidence of secondary considerations was weak, the Board ultimately concluded that the prior art did not render obvious the “verification” and “highlighting” limitations of the challenged claims. Becton appealed.
Concluding that the Board’s prior art analysis lacked substantial evidence, the Federal Circuit reversed. For the “verification” step, the Court disagreed with the Board’s determination that Alexander’s use of the word “may” instead of “must” taught an optional, but not mandatory, review step. Applying the Board’s claim construction, the Court determined that Alexander’s use of the word “may” (in the phrase: “a remote pharmacist may verify each step. . . may provide an indication to a non-pharmacist…that the step was preformed correctly. . . may provide verification feedback. . .”) did not mean “occasionally,” but rather that a pharmacist may choose to systematically check each step of a non-pharmacist. With respect to the “highlighting” limitation, the Court determined that the Board erred by considering only what was disclosed within the four corners of Liff and failing to consider other information about what a person of ordinary creativity would have understood.