C R Bard Inc. et al v. AngioDynamics Inc.

Filing 156

MEMORANDUM ORDER re: claim construction. Signed by Judge Sue L. Robinson on 5/19/2017. (nmfn)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

C.R. BARD, INC. and BARD
PERIPHERAL VASCULAR, INC.,
Plaintiffs,

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) Civ. No. 15-218-SLR/SRF

v.

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ANGIODYNAMICS, INC.,
Defendant.

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MEMORANDUM ORDER
At Wilmington this '{\rday of May, 2017, having heard argument on, and having
reviewed the papers submitted in connection with, the parties' proposed claim
construction;
IT IS ORDERED that the disputed claim language of U.S. Patent Nos. 8,475,417
("the '417 patent"), 8,805,478 ("the '478 patent"), and 8,545,460 ("the '460 patent") shall
be construed consistent with the tenets of claim construction set forth by the United
States Court of Appeals for the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005), as follows:

1. "An assembly for identifying a power injectable vascular access port,
comprising," "A method of performing a power injection procedure, comprising,"
and "A system for identifying a power injectable vascular access port,

comprising:" 1 The court concludes that the preambles are limiting. In this regard, the

court recognizes that the Federal Circuit, depending on the panel and the facts before
it, has expressed guidance on this issue in various ways. However, given that the
undisputed focus of each of the asserted patents is on how to identify or use a power
injectable vascular access port, the Federal Circuit's decisions in On Demand Machine
Corp. v. Ingram Industries, Inc., 442 F.3d 1331 (Fed. Cir. 2006), and Coming Glass
Works v. Sumitomo Electric U.S.A., Inc., 868 F.2d 1251 (Fed. Cir. 1989), resonate most
directly to the facts at bar. More specifically, the inventors of the asserted patents
recognized that: (1) power injection procedures require a vascular port structured to
accommodate the fluid flow rate and pressure rates of such a procedure; and (2) it was
important to identify the access port as being structured for power injection. (See, e.g.,
'417 patent, 2:63-3: 1; 4:4-9; 25:25-38) As the court understands the claims at issue,
then, the focus is on how to make a power injectable vascular access port identifiable,
not necessarily on how to make a power injectable vascular access port. Therefore, the
preambles of the asserted patents "serve[] to focus the reader on the invention that is
being claimed" and "state[] the framework of the invention." On Demand, 442 F.3d at
1343. The inventors at bar were working on a particular problem, and it would be
inappropriate to read the claims more broadly than the inventive context. Consistent
with Coming, the preambles at bar "do give 'life and meaning' and provide further
positive limitations as to the invention claimed." 868 F.2d at 1257 (citation omitted).

1

Preambles found in claims 1and8 of the '417 patent, claims 1 and 8 of the '478
patent, and claim 1 of the '460 patent, respectively.

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2. "Vascular access port" and "access port:" 2 "A port structured for power
injection." Consistent with the court's conclusion above, the inventions disclosed in the
asserted patents are directed to identifying and using power injectable vascular access
ports, that is, ports which must be "suitable for flowing fluid at a fluid flow rate of at least
1 milliliter per second through the access port" and "suitable [as well] for
accommodating a pressure within the cavity of at least 35 psi." (See, e.g., '417 patent,
claim 1)
3. "Identifiable feature" limitations:" 3 Defendant contends that these various
limitations are indefinite. The Supreme Court in Nautilus, Inc. v. Biosig Instruments,
Inc., 134 S. Ct. 2120 (2014), has read§ 112's definiteness requirement to mean that "a

patent's claims, viewed in light of the specification and prosecution history, [are meant
to] inform those skilled in the art about the scope of the invention with reasonable
certainty." Id. at 2129. While recognizing the "inherent limitations of language," the
Court explained that "a patent must be precise enough to afford clear notice of what is
claimed, thereby 'appris[ing] the public of what is still open to them,' ... in a manner
that avoids '[a] zone of uncertainty which enterprise and experimentation may enter
only at the risk of infringement claims .... "' Id.. at 2123. The Federal Circuit in Cox
Commc'ns, Inc. v. Sprint Commc'n Co. LP, 838 F.3d 1224 (Fed. Cir. 2016), more

recently explained that "the dispositive question in an indefiniteness inquiry is whether
the 'claims,' not particular claim terms, 'read in light of the specification delineating the
2

Claims 1 and 8 of the '417 patent; claims 1 and 8 of the '4 78 patent; and claim 1
of the '460 patent.
3

Claims 1, 2, 6, 8, 9 and 13 of the'417 patent; claims 1 and 2 of the '460 patent.

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patent, and the prosecution history, fail to inform, with reasonable certainty, those
skilled in the art about the scope of the invention."' Id. at 1231 (citing Nautilus, 134 S.
Ct. at 2129). Therefore, in an attempt to follow the guidance of the Courts in Nautilus
and Cox, the court declines to construe this phrase separately from the more complete
limitations discussed below.
4. Defendant argues in this regard that various of "the claims neither define nor
circumscribe the scope of" the "identifiable feature" limitations; indeed, the limitations
"must be broad enough to encompass a myriad of possibilities, such as: (1) 'particular
geometric shapes'; (2) 'radiographic markers perceivable via x-ray'; (3) 'structural
features ... perceivable via palpation'; (4) visually perceptible information'; (5) 'RFID
tags'; and (6) ultrasound-detectable features."' (D.I. 120 at 7-8) And, indeed, the
specifications of the patents in suit disclose that "at least one identification attribute may
be observed (e.g., visually, by palpation, ultrasonically, radiographically, etc.) or
otherwise detected." (See, e.g., '417 patent, 25:35-38) The specifications conclude
with notice that "various other embodiments structures may be employed for forming at
least one identifiable feature of an access port of the instant disclosure." (See, e.g.,
'417 patent, 30:43-45) There is no doubt, then, that the claims at issue are very broadly
written. But "[m]erely claiming broadly does not render a claim insolubly ambiguous,
nor does it prevent the public from understanding the scope of the patent." Ultimax
Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1352 (Fed. Cir. 2009)

(citing Application of Gardner, 427 F.2d 786, 788 (C.C. P.A. 1970)).
6. Claims 1-6 and 8-13 of the '417 patent: Not indefinite, as each limitation is

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narrowed in scope through the context of the whole; e.g., one of skill in the art can
discern what the first identifiable feature can be by eliminating as choices radiographic
markers and features separated from the port. (See '417 patent, 25:35-38) This
analysis is carried to its logical end when the dependent claims are reviewed, as they
further limit the choices as to what the first and second features can be.
a. "[A] first [and a] second identifiable feature incorporated into the

access port:" "Two perceivable attributes that identify an access port as being
structured for power injection, one of the two attributes being a radiographic attribute
that is perceivable via x-ray." ('417 patent, 25:35-38, 26:46-60; claims 1, 4, 5, 8, 11,
and 12)
b. "[A] third identifiable feature separated from the subcutaneously

implanted access port::" "A third perceivable attribute that identifies an access port as
being structured for power injection, and that is separate from the port that is implanted
under a patient's skin." The specification describes how an access port may be
identified as structured for power injection by actually identifying the patient, e.g., with a
"key chain, a bracelet, a wrist band, a sticker provided on a patient's chart, a patient ID
card, a label provided on packaging of the access port," or other "information carrying
device." ('417 patent, 27:6-28; claims 1, 6, 8, and 13)
c.

"[T]he other of the first and second features is a structural feature

.. perceivable via palpation:" "A structural attribute of the access port that identifies
the port as being structured for power injection, which attribute can be observed when
touched." ('417 patent, 25:35-38; claims 2 and 9)

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d. "[T]he structural feature comprises a body having a particular
geometric shape:" "The access port housing has a geometric shape that identifies the
access port as being structured for power injection." ('417 patent, 26:10-17, claims 3
and 10)
7. Claims 1, 2, and 4 of the '460 patent: Not indefinite, for the reasons
discussed above.
a. "[A] first identifiable feature incorporated into the access port ...
comprising a radiographic marker:" "A first attribute that identifies an access port as
being structured for power injection and is perceivable via x-ray." ('460 patent, 25:3538, 26:46-60; claims 1 and 4)
b. "[A] second identifiable feature separated from the
subcutaneously implanted access port:" "A second perceivable attribute that
identifies an access port as being structured for power injection, and that is separate
from the port that is implanted under a patient's skin." ('460 patent, 27:6-28, claims 1
and 2)
8. Claims 1, 8, and 11 of the '478 patent. Not indefinite, for the reasons
discussed above.
a. "Identifying the indicating radiographic feature on the x-ray:"
"Recognizing that the radiographic attribute on the x-ray identifies an access port as
being structured for power injection." ('478 patent, 25:41-44, 26:52-58; claims 1 and 8)
b. "Confirming that the access port is suitable for flowing fluid at a
rate of at least 1 milliliter per second by visually perceiving information outside of

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the body:" "A perceivable attribute that identifies an access port as being structured for

power injection, and that is separate from the patient's body." ('478 patent, 27:13-35,
claims 5 and 11)
9. The court has provided constructions in quotes for the claim limitations at
issue. The parties are expected to present the claim constructions consistently with any
explanation or clarification herein provided by the court, even if such language is not
included within the quotes.

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