PTAB Has Mixed Unpatentability Holding in Final Written Decision for Medical Sharps Disposal Patent

July 2, 2018 – Stericycle, Inc. filed a petition for inter partes review against Catalina Nominees Proprietary Ltd.’s medical sharps disposal patent.

On June 28, 2018, in its final written decision, the Board found a claim of a patent directed to a container for use in the disposal of medical and hospital sharps unpatentable under 35 U.S.C. § 102(e). The Board found that Petitioner had proven by a preponderance of the evidence that prior art patent ’285, in a single embodiment, discloses the limitations of claim 21. The Board also found Claim 21 unpatentable under 35 U.S.C. § 103(a), concluding that Petitioner had demonstrated by a preponderance of the evidence that the subject matter of claim 21 would have been obvious over prior art patent ’285.

However, the Board found claims 23 and 24 not unpatentable under 35 U.S.C. § 103(a), holding that Petitioner had not demonstrated by a preponderance of the evidence that the subject matter of claim 23 would have been obvious over prior art patent ’285 combined with prior art patent ’231, or over prior art patent ’285 combined with prior art patent ’622. The Court reached the same conclusion for claim 24, since it depends from claim 23.

The patent at issue was U.S. Patent No. 6,250,465, entitled “Sharps container.” The case is captioned Stericycle, Inc. v. Catalina Nominees Proprietary Ltd., Case No. IPR2017-00519.

By: Julian G. Pymento