Argument Recap

On February 10, the Federal Circuit heard oral arguments in C.R. Bard, Inc. v. Medical Components, Inc., a patent case that includes both an appeal and a cross-appeal. In the appeal, the Federal Circuit is reviewing a determination by a district court that Bard’s patent 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 patent claims are ineligible. The panel hearing the oral argument included Judges Chen, Wallach, and Hughes. This is our argument recap.

Omar Kahn argued for Bard. He began by arguing that the district court erred by holding the patents ineligible as printed matter because Federal Circuit precedent points to the opposite ruling. In response to a question, Kahn admitted that the claims include a message, alphanumeric radio markers, and highlighted that Bard does not dispute that the claims include printed matter with respect to the message conveyed. Kahn, however, pointed out that Bard disagrees that the claims are directed to the message “solely conveyed.” Instead, he argued, the claims are directed to the combination of the message conveyed and a relevant “structural element.” A judge then presented a hypothetical, asking whether it would still be printed matter if one took a pen and labeled something. Kahn responded that the hypothetical is completely different than the facts presented here because in the present case the alphanumeric letters are not visible to the naked eye. Kahn argued this fact distinguishes the present invention from printed matter.

Alfred Zaher argued for MedComp. Zaher began by arguing that the present case is not a carbon copy of the precedent relied upon by Bard because the claims in the previous case were traditional apparatus claims. One judge then indicated that the court had explained there is a distinction between information conveyed by radiographic alphanumeric messages and the means to convey the message. Zaher responded by arguing that there is no relationship between radiographic characters and the substrate here, and the radiographic marker itself is not a functional element of the apparatus. Another judge then asked why Zaher thought the radiographic marker has to be part of the substrate. Zaher responded by arguing this requirement comes from the printed matter doctrine. He explained that, if the printed matter is the only thing that remains, the claim is ineligible. Finally, a judge effectively asked whether Zaher’s argument contradicts the court’s precedent. Zaher indicated that this may be true and it might create a situation where en banc consideration may be required.

In rebuttal, a judge asked Kahn about any distinctions between the patents at issue in the court’s precedent and the patents at issue in the present case. Kahn responded by arguing that the claims in the previous case are indistinguishable from the claims in this case. Kahn, moreover, asserted that Bard should prevail under the court’s precedent even if there is no functional relationship to the substrate. In the court’s precedent, he argued, the court found no functional relationship and still held the claims to be eligible.

Zaher, in his rebuttal related to MedComp’s cross-appeal, argued that the claims in the MedComp patents overlap with the subject matter in the Bard patents. Indeed, he pointed out, there was interference conducted by the Patent and Trademark Office.

We will continue monitoring this case and report on developments.