WilmerHale achieved a significant victory for client Becton, Dickinson and Company when the Federal Circuit reversed a prior Patent Trial and Appeal Board decision and held that all claims of US Patent No. 8,554,579 are unpatentable. Together with an earlier appeal won by the firm, the Federal Circuit has now eliminated all three Baxter patents asserted against BD in parallel district court litigation.

The lawsuit against BD, originally filed in the Southern District of California, alleged infringement of three Baxter telepharmacy patents. The Patent Trial and Appeal Board found that two of the Baxter patents were invalid, but found that the third patent – the ’579 patent – was not invalid. WilmerHale came in on appeal and secured affirmance on the first two patents on March 8. BD then asked the Federal Circuit to reverse the Board’s decision on the third, remaining patent.

On April 8, Partner Tom Saunders argued the appeal on the ’579 patent. In an opinion issued today, the Federal Circuit ruled that the Patent Trial and Appeal Board’s decision was not supported by substantial evidence. This rare reversal of a Board decision means that BD has swept Baxter on all three IPR appeals and eliminated the three patents asserted in the Southern District of California litigation.

Tom Saunders argued the appeal. Omar Khan, Katherine Kieckhafer, and Cristina Salcedo were also critical members of the team.