Telepharma Disconnect: Federal Circuit Reverses PTAB on Obviousness, PTAB Litigation Blog

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On May 28, the Federal Circuit reversed a PTAB inter partes review (“IPR”) decision that held Baxter Corporation Englewood’s (“Baxter’s”) claims were not invalid under 35 U.S.C. § 103(a) obviousness based on three prior art references: Alexander, Liff, and Morrison. The appeal involved telepharmacy technology for providing drug information to a pharmacist for approval while other non-pharmacists prepare the order. At issue on appeal were two limitations of the 8,554,579 (“579 patent”), referred to as the “verification limitation” and the “highlighting limitation.” The verification limitation relates to steps that must be verified as completed before the pharmacist can continue and the highlighting limitation relates to interactive screens that include prompts which can be highlighted for additional information on the relevant step. The ‘579 patent was one of three patents asserted by Baxter against the medical technology company Becton, Dickinson, and Company (“Becton”) in a parallel litigation in the Southern District of California. The opinion, written by Judge Dyk, concluded that “the Board’s determination that the verification and highlighting limitations are not obvious is not supported by substantial evidence.”

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