June 2012

Spotlight Info

In In re Baxter International, Inc., No. 11-1073 (Fed. Cir. May 17, 2012), the Federal Circuit affirmed the Board’s decision that claims of U.S. Patent No. 5,247,434 (“the ’434 patent”) were invalid as obvious, despite the claims having been held valid in an earlier appeal from the district court, which was affirmed by the Federal Circuit.  In the earlier litigation, the district court held and the Federal Circuit affirmed that the accused infringer had failed to meet the clear and convincing evidentiary standard necessary for a showing of obviousness.  In a concurrent reexamination proceeding, the Board affirmed the examiner’s rejections of the claims on obviousness grounds.

On appeal, the Federal Circuit held that substantial evidence supported the Board’s finding that the prior art disclosed certain claim limitations and that because the parallel proceedings necessarily applied different burdens of proof and relied on different records, the PTO did not err in reaching a different conclusion than the district court.  See this month’s edition of Last Month at the Federal Circuit for a full summary of this decision.