On May 28, 2021, the Federal Circuit found obvious the claims of
a patent directed to telepharmacy, describing a process allowing a
pharmacist to remotely supervise and approve the work of
non-pharmacists in filling drug orders. The court reversed the
PTAB's decision to the contrary. Becton Dickinson and Co.
v. Baxter Corp. Englewood, 998 F.3d 1337 (Fed. Cir. 2021). In
reaching its conclusion, the court clarified that a prior art
patent that has previously been invalidated still qualifies as
prior art under pre-AIA 102(e). Id. at 1345.
Baxter's patent, U.S. 8,554,579, claims systems for the
preparation of drug orders by a non-pharmacist where a pharmacist
located remotely verifies each step of the preparation. Becton
Dickinson ("BD") successfully petitioned the Board to
institute an IPR, challenging the validity of certain claims of the
patent. In asserting that the challenged claims were invalid,
BD relied primarily on three prior art references: U.S. Patent
