This blog has previously discussed the Federal Circuit’s decision in Becton, Dickinson and Co. v. Baxter Corp. Englewood, — F.3d —, No. 2020-1937, 2021 WL 2176796 (Fed. Cir. May 28, 2021). See Telepharma Disconnect: Federal Circuit Reverses PTAB on Obviousness. While the thrust of the Federal Circuit’s decision was about obviousness, the court also addressed the issue of whether a patent must be valid to constitute 102(e)(pre-AIA) prior art—and the answer was an unequivocal “no.”
In this appeal, Baxter sought to reverse the PTAB’s findings that its U.S. Patent 8,554,597 (“the ’579 Patent”) was invalid after inter partes review. There was no dispute that one of the asserted references, U.S. Patent No. 8,374,887 (“Alexander”), was filed before the earliest filing date of the application that led to Baxter’s ’579 patent. But Baxter argued that the PTAB erred in finding that Alexander was prior art under § 102(e)(pre-AIA) because Alexander had been found invalid in earlier inter partes proceedings. Thus, Baxter reasoned, “because the Alexander ‘grant’ had been revoked, it can no longer qualify as a patent ‘granted’ as required for prior art status under Section 102(e)(2).” 2021 WL 2176796 at *7. The Federal Circuit quickly disposed of this argument, however, holding that “[t]he text of the statute requires only that the patent be ‘granted,’ meaning the ‘grant’ has occurred. 35 U.S.C. § 102(e)(2)(pre-AIA). The statute does not require that the patent be currently valid.” Id.
Baxter also argued that because Alexander had not been published at the time Baxter filed the application that led to the ’597 Patent, a person of ordinary skill in the art would not have considered Alexander to be prior art as of the filing date, or, indeed, would even know of Alexander at that time. Again, the Federal Circuit disposed of this argument quickly and unequivocally noting that the Supreme Court’s decision in Hazeltine Research, Inc. v. Brenner, 382 U.S. 252, 254-56 (1965), “forecloses this argument.”
Thus, it is now clear that any issued patent, regardless of its current status or validity, can be Section 102(e)(2)(pre-AIA) prior art if the other statutory requirements are met. Moreover, such prior art can invalidate another patent’s claims even if the applicant was not or could not have been aware of the prior art at the time the patent application was filed.
 The PTAB also found that Alexander was not prior art under 35 U.S.C. § 102(e)(1)(pre-AIA), but that issue was abandoned on appeal.