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Victory at the Federal Circuit

April 28, 2023
Business Litigation Reports

Quinn Emanuel achieved a significant victory for firm client C.R. Bard, Inc. when the Federal Circuit revived three patents, reversing the district court’s summary judgment ruling in a case against competitor MedComp.  The case (“Port 1”) involves power injectable vascular access ports that are identifiable after implantation.  It has been pending since January 2012, when Bard sued MedComp as well as AngioDynamics and Smiths Medical for patent infringement.  The cases were stayed for seven years while the patents underwent reexamination. 

While the cases were stayed, Bard, represented by another law firm, tried a case against Angio on patents directed to similar subject matter (“Port 2”).  Judge Battalion, sitting by designation in the District of Delaware, granted JMOL and, inter alia, invalidated Bard’s patents as patent ineligible under Section 101.  Judge Battalion invoked the so-called “printed matter” doctrine and decided that because Bard’s claims contain information—the message that the port is power injectable—they are patent ineligible under Section 101.  Bard appealed and the Federal Circuit reversed, holding that Bard’s claims are patent eligible as a matter of law.  The Federal Circuit concluded that “although the asserted claims contain printed matter that is not functionally related to the remaining elements of the claims, each claim as a whole is patent eligible because none are solely directed to the printed matter.”

Undeterred by the Federal Circuit holding in Port 2, MedComp alleged that Bard’s Port 1 patents are invalid under Section 101 and moved for summary judgment.  Bard argued in response, inter alia, that the Federal Circuit decision in Port 2 controls because the asserted claims are for Section 101 purposes the same as the Port 2 claims.  Because the Port 2 claims are eligible as a matter of law, so too are the Port 1 claims.  Chief Judge Shelby granted MedComp’s motion and, although he recognized that his ruling “may appear in tension with the Federal Circuit’s holding in” Port 2, he invalidated Bard’s patents.     

Bard appealed, and the Federal Circuit took just one week after oral argument to issue a decision in Bard’s favor.  The Federal Circuit agreed with Bard that Port 2 is “virtually identical to the [case] before us now.”  The Federal Circuit held that “[b]ecause we are bound by our precedent, we conclude that the asserted claims in Bard’s three patents are directed to eligible subject matter under § 101.”  Now that Bard’s patents have been revived, the three Port 1 cases, as well as two other cases involving similar patents, will proceed towards trial.