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

569 F.Supp.3d 1164

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 November 3, 2021

Lauren Martin, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan LLP, Boston, MA, Brian Biddinger, Matthew A. Traupman, 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, for Plaintiff C.R. Bard, Inc.

Matthew A. Traupman, Quinn Emanuel Urquhart & Sullivan LLP, New York, NY, for Plaintiff Bard Peripheral Vascular, Inc.

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

Aaron Haleva, Montgomery, McCracken, Walker & Rhoads, LLP, Cherry Hill, NJ, 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 MOTION FOR SUMMARY JUDGMENT (DKT. 750) AND DENYING MOTION FOR SUMMARY JUDGMENT (DKT. 460) AS MOOT

ROBERT J. SHELBY, United States Chief District Judge

Before the court are Plaintiff C.R. Bard, Inc. and Plaintiff Bard Peripheral Vascular, Inc.’s (Bard's) two Motions for Summary Judgment of Invalidity of Medical Components, Inc.’s (MedComp's) U.S. Patent No. 8,021,324.¹ For the reasons explained below, the court GRANTS the second Motion² and DENIES the first Motion³ as moot.

FACTS

Bard and MedComp develop, produce, and market various vascular access devices, including subcutaneous access ports. Access ports provide a convenient method of delivering infusions of medicine, blood products, or other fluids without requiring surgical procedures.⁴ Power injection machines employing high pressure are sometimes used to deliver fluids through access ports.⁵ Unlike regular access ports that can fracture and cause significant bodily injury if subjected to power injection, special power-injectable ports are designed to withstand high pressures.⁶ Generally, access ports offered by different manufacturers and different models exhibit similar geometries, making it difficult to differentiate between power injectable ports and regular access ports once they have been implanted in the body of a patient.⁷ Access port manufacturers thus seek methods of adding identifiers to their ports to enable identification of power-injectability following implantation.⁸ 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) —relating to the radiopaque identification of subcutaneous access ports.⁹ MedComp's counterclaim asserts U.S. Patent No. 8,021,324 (the ’324 Patent).¹⁰ Like the Bard Patents at issue, the ’324 Patent uses radiopaque indicia to identify features of a subcutaneous access port after implantation.¹¹

PROCEDURAL HISTORY

On January 11, 2012, Bard filed the instant action against MedComp, alleging infringement of the ’022, ’302, and ’615 Patents.¹² On March 14, 2012, MedComp answered and counterclaimed, alleging Bard infringed its ’324 Patent.¹³ On December 17, 2012, the case was stayed and administratively closed while the patents-in-suit underwent inter partes reexamination before the United States Patent and Trademark Office.¹⁴ On October 4, 2019, the stay was lifted.¹⁵ Fact discovery closed on February 8, 2021. The parties completed claim construction briefing on April 2, 2021, and conducted a technology tutorial for the court on April 28, 2021.¹⁶

Bard filed its first Motion for Summary Judgment on March 5, 2021,¹⁷ and MedComp filed its own Motion for Summary Judgment on the same day.¹⁸ Bard argued the ’324 Patent must be invalidated because Bard's PowerPort MRI was prior art.¹⁹ MedComp argued, inter alia , that it was entitled to summary judgment on the invalidity of Bard's asserted patents under 35 U.S.C. § 101.²⁰ On July 22, 2021, this court issued a Memorandum Decision and Order (the Order) partially granting MedComp's Motion for Summary Judgment.²¹ The court found that Bard's three asserted patents were invalid under 35 U.S.C. § 101 because the claims at issue were directed solely to non-functional printed matter and contained no additional inventive concept.²²

At the court's invitation, Bard filed a new Motion for Summary Judgment (the Motion) challenging MedComp's ’324 Patent based on the framework set forth in the court's Order.²³ The court now turns to Bard's Motion.

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."²⁴ A dispute is genuine "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party."²⁵ A fact is material if, under the governing substantive law, it could "affect the outcome of the suit."²⁶ When applying this standard, the court "view[s] the evidence and make[s] all reasonable inferences in the light most favorable to the nonmoving party."²⁷

ANALYSIS

The court first summarizes the framework from its earlier Order, in which it found that Bard's three asserted patents were invalid under 35 U.S.C. § 101 because the asserted claims were directed only to abstract ideas. Next, the court analyzes MedComp's asserted patent using the same framework, first ascertaining the undisputed facts and then applying the law of the case to MedComp's ’324 Patent.

a. The AngioDynamics and Alice Frameworks

Under 35 U.S.C. § 101, patentable subject matter includes "any new or useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."²⁸ The Federal Circuit "has generally found printed matter to fall outside the scope of § 101."²⁹ "While historically ‘printed matter’ referred to claim elements that literally encompassed ‘printed’ material, the doctrine has evolved over time to guard against attempts to monopolize the conveyance of information using any medium."³⁰ Accordingly, under the printed matter doctrine, printed matter cannot be patented "unless it is functionally related to ... the structural elements of the claimed invention."³¹ In the AngioDynamics decision, the Federal Circuit set out a two-step inquiry to determine if a claim limitation is directed solely to printed matter.³² The Federal Circuit then applied what is known as the Alice framework to determine if claimed printed matter was patent eligible.³³

In its prior Order, the court applied the AngioDynamics inquiry and Alice framework to the Bard Patents and found they were invalid under § 101. Specifically, the court first found under AngioDynamics , Bard's asserted claim limitations were directed solely to printed matter with no additional inventive concept.³⁴ Next, the court determined the Bard Patents were invalid under the Alice framework, which determines whether a patent is invalid for being directed toward a patent ineligible concept, such as an abstract idea.³⁵

Under the AngioDynamics inquiry, "a claim may be patent ineligible under § 101 on the grounds that it is: (1) directed solely to non-functional printed matter and (2) the claim contains no additional inventive concept."³⁶ The claims at issue in Bard's ’302 and ’022 Patents required a radiopaque identifier conveying to a medical practitioner that the implanted port is power injectable, and the claim at issue in the ’615 Patent required a structural feature with at least one concave side, also conveying that the implanted port is suitable for power injection.³⁷ The court found at step one of the inquiry these asserted claims were directed solely to non-functional printed matter: in the case of ’302 and ’022 Patents, by using radiopaque identifiers to communicate that subcutaneous access ports were suitable for power injection, and in the case of the ’615 Patent, by using a concave surface to communicate the same idea.³⁸ At step two of the AngioDynamics inquiry, the court found the Bard Patents contained no additional inventive concept because the focus of each claimed advance was using the radiopaque or concave identifying features in conjunction with a typically-constructed access port to convey the information that the access port is power injectable.³⁹

The court then moved to the two-step Alice inquiry, under which it determines whether a claim is patent-eligible under 35 U.S.C. § 101 by distinguishing patent-ineligible claims for abstract ideas from patent-eligible applications of abstract ideas.⁴⁰ At step one, the court asked whether the claims at issue, in their entirety, were directed to ineligible subject matter.⁴¹ The court found all the asserted claims were directed to using a specific identifier—either a radiopaque identifier or a structural element including at least one concave side—to communicate information to a medical practitioner that the access port in question is power injectable subsequent to implantation.⁴² The court further noted the claims were not directed to an improvement in port technology, there was no description in the claim language...