Argument Preview / Panel Activity

Three cases being argued in February at the Federal Circuit attracted amicus briefs. One of those cases is C.R. Bard, Inc. v. Medical Components, Inc., a patent case that includes both an appeal and a cross-appeal. In this case, the Federal Circuit will review a determination by a district court that Bard’s claims are directed to patent-ineligible printed matter under 35 U.S.C. § 101 and, moreover, lack an inventive concept. With respect to the cross-appeal, the court will similarly consider whether MedComp’s claims are ineligible. This is our argument preview.

Bard in its opening brief first argues “[t]he district court erred in ruling that Bard’s claims are directed to patent-ineligible printed matter under § 101.” Specifically, Bard asserts the district court’s ruling conflicts with Federal Circuit precedent addressing “the interplay between the printed matter doctrine and § 101.” Bard points to precedent holding “that a patent claim is ineligible under § 101 when ‘it is directed solely to non-functional printed matter and the claim contains no additional inventive concept.'” According to Bard, its claims are directed solely to non-functional printed matter. Second, Bard contends that, “[e]ven if Bard’s claims are directed solely to printed matter . . . the district court still erred in granting summary judgment . . . because the record is insufficient as a matter of law to establish that the patents lack an inventive concept.” According to Bard, this is because “[t]he use of radiopaque indicia on ports to enable a medical practitioner to identify power injectability is an inventive concept.”

It its principal and response brief, MedComp asserts the district court “correctly held that the claims asserted by Bard are solely directed to printed matter . . . and correctly recognized that . . . printed matter includes the ‘matter’ itself.” More specifically, MedComp contends that, “[b]ecause the only purported advance of the claims asserted by Bard is an informative label, this Court should affirm the District Court’s findings that the claims are solely directed to printed matter.” With regard to the alleged inventiveness of Bard’s claims, MedComp argues that, “because it had been routine and conventional to place radiopaque (i.e., the quality of being visible under x-ray) information on implanted medical devices, and because the claims otherwise only cover conventional ports,” the asserted claims are not inventive. With respect to its cross-appeal, MedComp also argues that, if the Federal Circuit “finds Bard’s claims eligible under Section 101, it should similarly find MedComp’s . . . claims eligible under the law of the case doctrine.”

Bard, in its response and reply brief, reasserts the arguments it made in its opening brief. For example, it argues the Federal Circuit “has squarely held that a claim must be ‘directed solely’ to printed matter to warrant invalidation under § 101” and Bard’s claim is not directed solely to printed matter. Moreover, it contends that “evidence showing that radiographic identifiers were placed on various types of implantable medical devices was insufficient to establish as a matter of law that the ‘ordered combination’ of a power injectable port and a radiographic marker identifying the port as power injectable lacked an inventive concept.” Finally, as to MedComp’s cross-appeal, Bard argues that, because MedComp’s opening brief “lacks any substantive argument, in no event should the judgment of invalidity as to MedComp’s patents be disturbed.”

In its reply brief, MedComp asserts that, “[b]ecause the District Court applied the same legal analysis to patents without principled distinctions between them and relied on the same factual record, if the District Court erred with respect to its judgment of invalidity of Bard’s patents, the judgment of invalidity of MedComp’s patent should likewise be reversed.”

Smiths Medical ASD, Inc. filed an amicus brief in favor of MedComp. It argues “the District Court took all of the necessary steps to come to the correct conclusion that the asserted claims are subject to the printed matter doctrine and are invalid because they are directed to ineligible subject matter.”

Angiodynamics, Inc. also filed an amicus brief in favor of MedComp. It argues “the district court properly applied [the Supreme Court’s] two-step inquiry to invalidate the claims as patent ineligible.” More specifically, “[a]t step one, the district court properly [held] that the claims are directed to the abstract idea of communicating information.” Moreover, “[a]t step two, the district court properly relied on a developed record—including publicly available references and Bard’s own admissions—when determining that there is no inventive concept.”

This case will be argued on Friday, February 10. We will report on any developments.