By Trenton Morton, HydroGear
This entry covers the patent eligibility questions (35 U.S.C. § 101) in C R Bard Inc. v. Angiodynamics, Inc., which the Federal Circuit handed down on November 10, 2020. The Reader’s Digest version of this entry proceeds as follows:
- Courts should rely on Alice’s two-step, § 101 test to determine the eligibility of printed matter claims.
- The district court wrongly determined that the asserted claims were ineligible under § 101.
For decades, the Federal Circuit and its predecessor court have found that printed matter isn’t patentable. AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1064 (Fed. Cir. 2010) (“This court has generally found printed matter to fall outside the scope of § 101.”). For example, otherwise mindblowing breakthroughs, like labels for wooden flooring featuring the “type, grade, and length” of a wood bundle, In re Bruce, 56 F.2d 673, 673 (C.C.P.A. 1932), and the presence of a branding “pigment” on meat, In re McKee, 75 F.2d 991, 991 (C.C.P.A. 1935), are simply ineligible. But the Federal Circuit hasn’t spent much time expounding on these types of cases, especially regarding § 101 eligibility.
With the Supreme Court’s crystal-clear guidance for § 101 analyses in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014), to show us the way, and in the spirit of Federal Circuit tradition, doesn’t the typical rule demand an exception? Methinks so. Enter C R Bard Inc. v. Angiodynamics, Inc., No. 2019-1756, slip op. at 17 (Fed. Cir. 2020).
In Bard, the claims at issue relate to vascular access ports. Id. at 4–5. This technology amounts to a plastic device that resides beneath a patient’s skin to permit blood vessel access, without needing to prick the patient with a needle. U.S. Patent No. 8,475,417, 2:51–62. With this access, a doctor can administer a “contrast media,” which helps to image the vascular system when running a CT scan. Id. at 1:17–28. “Power injection,” via the access port, is a term of art describing the administration of the contrast media. The claims call for visual markings that help a person visually spot an access port that can accommodate power injection. Figs. 1–3, plucked from a brochure at CR Bard’s website, show how the access port may include a marking that’s associated with power injection, which an infusion set can implement.
In the claims, either a “radiographic marker” or “radiographic feature” identifies the port. That is, the marker or feature (visible with x-ray assistance) says “All systems go! Power inject away!” Of course, these markings simply conveying information, a point on which the parties agreed, making the claims directed to printed matter. Bard, at 15.
The Federal Circuit admitted that this case seemed like one of first impression. Id. at 17 (“[O]ur case law has typically applied the [printed matter] doctrine to hold that specific limitations of a claim are not entitled to patentable weight for purposes of novelty under § 102 and non-obviousness under § 103.”). Indeed, the court hadn’t determined whether it could, under Alice, find printed matter claims ineligible. Id. In Bard, the court found that, yes it could use the Alice test on printed matter. Id. at 19.
But how should a court determine if the claims are ineligible? That’s not a question of first impression. Here, the court shifted into typical Alice mode, emphasizing how the claims focused on not just “the content of the information conveyed, but also . . . the means by which that information is conveyed.” Id. This means “satisf[ied] a specific need for easy vascular access during CT imaging, and it is the radiographic marker in the claimed invention that makes the claimed port particularly useful . . . allow[ing] the implanted device to be readily and reliably identified via x-ray.” Id. The court knew of no evidence that radiographic marking, in this context, routinely existed in the prior art. Id. at 20.
In short, all claims at issue were not ineligible. Alice’s two-step test applies to printed matter, as it does to abstract ideas. The Federal Circuit reversed the district court’s 101 findings.
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