C.R. Bard, Inc. v. Med. Components, Inc.

550 F.Supp.3d 1202

C.R. BARD, INC., a New Jersey corporation, and Bard Peripheral Vascular, Inc., an Arizona corporation, Plaintiffs,

v.MEDICAL COMPONENTS, INC., a Pennsylvania corporation, Defendant.

2:12-cv-00032-RJS-DAO

United States District Court, D. Utah.

Signed July 22, 2021

Bryon J. Benevento, Kimberly Neville, Dorsey & Whitney LLP, Salt Lake City, UT, Lauren Martin, Pro Hac Vice, Anne-Raphaelle Aubry, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan LLP, Boston, MA, Steven C. Cherny, Pro Hac Vice, Brian Biddinger, Matthew A. Traupman, Pro Hac Vice, Nicole Felice, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan LLP, Jordan Malz, Pro Hac Vice, Kirkland & Ellis LLP, New York, NY, Amy R. Lemyre, Pro Hac Vice, Kirkland & Ellis, San Francisco, CA, Jared W. Newton, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan LLP, Washington, DC, for Plaintiff CR Bard.

Bryon J. Benevento, Kimberly Neville, Dorsey & Whitney LLP, Salt Lake City, UT, Steven C. Cherny, Pro Hac Vice, Matthew A. Traupman, Nicole Felice, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan LLP, New York, NY, Anne-Raphaelle Aubry, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan LLP, Boston, MA, Jared W. Newton, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan LLP, Washington, DC, for Plaintiff Bard Peripheral Vascular.

Aaron Haleva, Montgomery, McCracken, Walker & Rhoads, LLP, Berwyn, PA, Alfred W. Zaher, Pro Hac Vice, Brianna Vinci, Pro Hac Vice, John J. Powell, Pro Hac Vice, Peter Breslauer, Pro Hac Vice, Stephanie K. Benecchi, Pro Hac Vice, Maryellen Madden, Pro Hac Vice, Patrick J. Farley, Pro Hac Vice, Joseph C. Monahan, Pro Hac Vice, Montgomery McCracken Walker & Rhoads LLP, Michael B. Hayes, Pro Hac Vice, Horn Williamson LLC, Samantha L. Southall, Pro Hac Vice, Buchanan Ingersoll & Rooney PC, Philadelphia, PA, J. Mark Gibb, Clinton E. Duke, Dentons Durham Jones & Pinegar PC, Salt Lake City, UT, for Defendant.

MEMORANDUM DECISION AND ORDER GRANTING IN PART DEFENDANT'S PARTIAL MOTION FOR SUMMARY JUDGMENT

ROBERT J. SHELBY, Chief United States District Judge

In this patent infringement action, Plaintiffs C.R. Bard, Inc. and Bard Peripheral Vascular, Inc. (collectively, Bard) assert three patents against Defendant Medical Components, Inc. (MedComp). All three patents are directed to systems and methods for identifying a vascular access port as suitable for power injection following implantation of the device in the human body. Now before the court is MedComp's Motion for Partial Summary Judgment on the grounds of non-infringement and invalidity as to Bard's patents-in-suit.¹ For the reasons explained below, MedComp's Motion is GRANTED IN PART. The court defers consideration of MedComp's request for summary judgment on Bard's alleged infringement of MedComp's asserted patent.

BACKGROUND

Bard and MedComp are medical device manufacturers who develop, produce, and market various vascular access devices, including subcutaneous access ports. Access ports are devices that are implanted within the body of a patient, providing a convenient method of repeatedly delivering infusions of medicine, blood products, or other fluids into a patient's veins without requiring invasive surgical procedures or the need to start a new intravenous line on each occasion.² Power injection machines employing high pressure are sometimes used to deliver highly viscous fluids through access ports at specific desired rates of flow.³ Unlike regular access ports that can fracture and cause significant bodily injury or death if subjected to power injection, special power injectable ports are designed to withstand high pressures.⁴

Generally, access ports offered by different manufacturers and different models exhibit substantially similar geometries, making it difficult to differentiate between power injectable ports and regular access ports once they have been implanted in the body.⁵ Due to reported cases of injury, "the FDA cautioned medical providers in 2004 and 2005 that they should not use vascular access ports for power injection unless the ports were specifically and identifiably labeled for such use."⁶ Access port manufacturers thus seek methods of adding identifiers to their ports that enable identification of power-injectability following implantation.⁷ The various iterations of port identification methods comprise the heart of the patent disputes between Bard and MedComp.

Bard asserts three patents in this case: U.S. Patent Nos. 7,785,302 (the ’302 Patent), 7,947,022 (the ’022 Patent), and 7,959,615 (the ’615 Patent).⁸ The ’302 Patent is the "parent" patent, while the ’615 Patent is a continuation and the ’022 Patent is a continuation in part of the ’302 Patent.⁹ All three of the asserted patents are directed to systems and methods for venous access port identification.¹⁰ The background and summary sections of the specifications in the ’302 and ’615 Patents are substantially similar,¹¹ and the detailed description sections of the specifications in the ’302 and ’022 Patents are also substantially similar.¹² Each of the independent and dependent claims in the ’302 and ’022 Patents require the presence of a type of radiopaque marker identifying the claimed port as power injectable.¹³ And the claim at issue in the ’615 Patent requires the presence of a structural feature identifying the claimed port as power injectable.¹⁴

The ’302 and ’022 Patents claim access ports wherein at least one radiopaque identifier is included in the port assembly, identifying the port as suitable for power injection. Regarding the ’302 Patent, Bard asserts independent claims 1, 5, 8, and 10, and dependent claims 3, 4, 6, and 7, each dependent from either claim 1 or claim 5.¹⁵ From the ’022 Patent, Bard asserts independent claims 1 and 10, and dependent claims 3, 5, 8, 9, 12, and 14, each dependent from either claim 1 or claim 10.¹⁶ Claim 1 of the ’302 Patent is illustrative of these claims:

1. A venous access port assembly for implantation into a patient comprising:

a housing having a discharge port, a needle-penetrable septum, and a cap securable to the housing and retaining the septum securely in the assembly, the housing having a housing base defining a bottom wall of at least one reservoir, and outwardly facing bottom surface,

the housing base including radiopaque alphanumeric characters that convey to a practitioner that the venous access port assembly is power injectable when an X-ray of the patient is taken after implantation.¹⁷

The ’615 Patent claims access ports wherein at least one structural feature is included in the port assembly, identifying the port as suitable for power injection. Bard asserts independent claim 8 of the ’615 Patent :

8. An access port for providing subcutaneous access to a patient, comprising:

a body defining a cavity accessible by inserting a needle through a septum, the body including a plurality of side surfaces and a bottom surface bounded by a bottom perimeter, the bottom surface on a side of the port opposite the septum, the bottom perimeter including a concave portion, the side surfaces including a first side surface through which an outlet stem extends; and

at least one structural feature of the access port identifying the access port as being power injectable subsequent to subcutaneous implantation, the at least one structural feature comprising at least one concave side surface in a second side surface different from the first side surface, the concave side surface extending to the bottom perimeter concave portion.¹⁸

PROCEDURAL HISTORY

On January 11, 2012, Bard filed the above-captioned action against MedComp, alleging infringement of the ’302, ’022, and ’615 Patents.¹⁹ At the same time, Bard also filed two similar infringement cases against AngioDynamics and Smiths Medical in this court.²⁰ These are known as the Port I cases. On December 17, 2012, the Port I actions were stayed and administratively closed while the patents-in-suit underwent inter partes reexamination before the United States Patent and Trademark Office (USPTO).²¹ The stay remained in place for approximately seven years until it was lifted on October 4, 2019.²² In November 2020, the AngioDynamics and Smiths Medical cases were transferred to the District of Delaware, but the instant MedComp action remained in Utah.²³

In 2015, while the Port I actions were stayed, Bard filed a separate suit against AngioDynamics in the District of Delaware (Port II ), alleging infringement of Bard's patents from a separate port patent family.²⁴ The patents at issue in Port II also claim strategies for identifying a power injectable port, specifically through the presence of radiographic markers.²⁵ On July 7, 2017, Bard filed a second infringement action against MedComp in the District of Utah (Port III ).²⁶ That case, now pending before Judge Howard Nielson, involves Bard's patents from both the Port I and Port II patent families.²⁷

Following the lifting of the stay in the Port I actions, this case has recommenced and progressed as follows: fact discovery commenced on March 30, 2020 and closed on February 8, 2021; the parties completed claim construction briefing on April 2, 2021; summary judgment briefing was completed on April 16, 2021; and the parties conducted a technology tutorial for the court on April 28, 2021.²⁸ After reviewing the claim construction briefs and cross-motions for summary judgment, the court finds issues concerning the invalidity of Bard's patents-in-suit ripe for review.

LEGAL STANDARD

Summary judgment is appropriate when "there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law."²⁹ A dispute is genuine "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party."³⁰ A fact is material if, under the governing substantive law, it could "affect the outcome of the suit."³¹ When applying this standard, the court "view[s] the evidence and make[s] all reasonable inferences in the light most favorable to the nonmoving pa...