In Re Baxter International, Inc.
678 F.3d 1357
| Fed. Cir. | 2012Background
- Baxter appeals a Board decision affirming examiner rejections of claims 26-31 of the '434 patent as obvious under 35 U.S.C. § 103(a).
- The '434 patent discloses a hemodialysis machine with a touch screen interface for monitoring and controlling treatment parameters.
- Claim 26 recites a means-plus-function for controlling dialysate and means for delivering dialysate with a touch-screen interface.
- Dependent claims 27, 30, and 31 add solicited input from the user for time-varying settings, anticoagulant delivery rate, and alarm limits.
- The PTO reexamination relied on CMS 08 Manual, Sarns 9000 Manual, Lichtenstein, and Thompson to render the claims obvious.
- The district court had previously held claims 26-31 would have been obvious, a ruling this court later reviewed in Fresenius.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Waiver of means-plus-function arguments | Baxter raised means-plus-function issues before the Board. | The Board should not consider arguments Baxter did not timely present. | Baxter waived claim 30 anticoagulant limitation; other meios preserved for appeal. |
| Sufficiency of structural analysis for claim 26 | Baxter argued the Board failed to perform Donaldson structural analysis. | PTO conducted adequate analysis; CMS 08 Manual and Lichtenstein disclose corresponding structures. | Substantial evidence supports structure for both means for controlling and means for delivering. |
| Effect of Fresenius decision in reexamination | Fresenius controlling; PTO cannot override final district court decision. | Reexamination uses different standard and records; not bound by Fresenius. | PTO did not err; reexamination can rely on new art and different burden of proof. |
| Construction of 'soliciting' in claims 27, 30, 31 | Board overbroadly construed soliciting to include any data-entry prompting. | Board's construction aligns with the description and requires active prompting for data entry. | Substantial evidence supports the Board's soliciting construction and the rejections. |
| Obviousness in view of CMS 08 Manual and other references | Prior art did not disclose the claimed combination or structure. | Combination of CMS 08 Manual, Sarns 9000, Lichtenstein, and Thompson renders claims obvious. | Board's obviousness findings sustained; claims 26-31 not patentable. |
Key Cases Cited
- In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994) (structural analysis required for means-plus-function limitations)
- Graham v. John Deere Co., 383 U.S. 1 (U.S. 1966) (obviousness framework and factual underpinnings)
- Ethicon, Inc. v. Quigg, 849 F.2d 1422 (Fed. Cir. 1988) (burden of proof and presumption of validity in reexaminations)
- In re Swanson, 540 F.3d 1368 (Fed. Cir. 2008) (reexamination standards contrasted with district court proceedings)
- Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (claim construction reviewed de novo)
- Swanson, 540 F.3d 1368 (Fed. Cir. 2008) (reexamination standard and evidence comparison to court determinations)
- Chicago & Southern Air Lines, Inc. v. Waterman S.S. Corp., 333 U.S. 103 (U.S. 1948) (finality and faith given to judicial decisions)
- Town of Deerfield v. FCC, 992 F.2d 420 (2d Cir. 1993) (administrative revision of prior judicial orders would undermine judiciary)