Federal Circuit Gives Stare Decisis Effect to a Judgment of Claim Validity

by Chris Holman

C.R. Bard, Inc. v. Med. Components, Inc., 2023 WL 2064163 (Fed. Cir. Feb. 17, 2023)

In Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation (1971), the Supreme Court held that a judgment of invalidity in a suit against one infringer accrues to the benefit of any other accused infringer unless the patent owner shows that he did not have a fair opportunity procedurally, substantively and evidentially to pursue his patent claim the first time.  Collateral estoppel (i.e., issue preclusion) under Blonder-Tongue is non-mutual.  While a judgment of invalidity binds the patent owner and its successors in interest because it is a party to the suit with adequate opportunity to contest the matter, a judgment of validity cannot operate in the patent owner’s favor to bind persons who are neither parties nor in privity with parties to the suit.

Stare decisis,  Latin for “to stand by things decided,” is a legal principle that directs courts to adhere to previous judgments, i.e., precedent, when resolving a case with comparable facts.  According to Chisum on Patents, “Federal Circuit decisions decline to give great weight or stare decisis effect to prior validity rulings.”  For example, in Gillette Co. v. S.C. Johnson & Son, Inc., (1990), the court held that the fact that the validity of a patent claim has previously been upheld in an earlier litigation is not to be given  stare decisis effect, citing Stevenson v. Sears, Roebuck & Co. (Fed. Cir. 1983).

In a recent non-precedential opinion, C.R. Bard, Inc. v. Med. Components, Inc., the Federal Circuit applied stare decisis to a prior validity ruling involving a different patent and a different accused infringer.  The Bard patents at issue are directed to radiopaque markings and structural features that can be used to identify whether a venous access port is power injectable, specifically a venous access port with an alphanumeric message that can be seen on an X-ray and that identifies the port as power injectable.

Representative claim 5 of U.S. Patent No. 7,785,302 claims:

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

a housing having an outlet, and a needle-penetrable septum, the needle penetrable septum and the housing together defining a reservoir, wherein:

the assembly includes a radiopaque alphanumeric message observable through interaction with X-rays subsequent to subcutaneous implantation of the assembly, and

the alphanumeric message indicating that the assembly is power injectable.

On motion for summary judgment, the district court found the asserted claims ineligible under § 101 because the claims were solely directed to non-functional printed matter and because the claims were directed to the abstract idea of “[using] an identifier to communicate information about the power injectability of the underlying port” with no inventive concept.

On appeal, the Federal Circuit reversed, explaining:

We are bound by our precedent in C R Bard Inc. v. AngioDynamics, Inc., 979 F.3d 1372 (Fed. Cir. 2020). There, we considered a case that is virtually identical to the one before us now. AngioDynamics also involved patents directed to radiopaque markers that could be used to identify venous access ports as power injectable, and the claims at issue were substantially similar to the asserted claims here. Furthermore, that case asked to consider the exact same question that is before us now: whether claims that include non-functional printed matter could be eligible under § 101. The court in AngioDynamics concluded that, although the asserted claims contained some non-functional printed matter, they were nonetheless eligible under § 101 because the claims were not solely directed to non-functional printed matter—they were also directed to “the means by which that information is conveyed.” Given these similarities, we must reach the same conclusion here as in AngioDynamics.

Because 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.

As noted above, Chisum’s authoritative treatise on U. S. patent law states that the Federal Circuit does not give “great weight or stare decisis effect to prior validity rulings,” and does not identify any cases which this has occurred.  The C.R. Bard court does not cite to any precedent, case law, or statute to justify its application of stare decisis in the present case.

Perhaps patent eligibility is uniquely amenable to stare decisis, given the amorphous nature of the Alice two part inquiry.  In its opening brief, Bard argued that:

Despite acknowledging the obvious similarities between AngioDynamics and the instant case, the district court . . .  declined to follow it because “the facts and procedural posture are different.” But in AngioDynamics, this Court held that Bard’s patents were valid at Alice step one. Because Alice step one presents a legal question that can be answered based on the intrinsic evidence, CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358, 1372 (Fed. Cir. 2020), any supposed differences in the record are irrelevant and thus provide no basis to depart from this Court’s holding that claims directed to features on ports for the purposes of post-implantation identification traverse Alice step one.

AngioDynamics (the company that lost on the issue of patent eligibility in the AngioDynamics decision) filed an amicus brief in C.R. Bard in support of the accused infringer, urging affirmance of the district court’s decision finding the claims patent ineligible. The company argued that the AngioDynamics decision addressed a different factual record and different legal issues, and that:

Unlike the district court in AngioDynamics, the district court here performed a full two-step Alice analysis. The district court also considered a significantly more developed record than the one in AngioDynamics, including multiple prior art references, Bard’s admissions that it did not invent radiopaque identifiers, and Bard’s admissions that adding radiopaque identifiers to ports would be trivial. . . . Bard’s reliance on AngioDynamics is misplaced.

AngioDynamics states in its amicus brief that its interest in the case stems from its involvement in litigation related to the patents asserted in C.R. Bard, as well as other Bard patents directed to “nearly identical subject matter,” which it believes would be impacted by Bard’s appeal. Presumably, the company was hoping to benefit from the collateral estoppel effect of the district court’s patent ineligibility ruling.

26 thoughts on “Federal Circuit Gives Stare Decisis Effect to a Judgment of Claim Validity

  1. 8

    All that’s happening here is the Federal Circuit is refusing to admit that they decided the earlier decision incorrectly. Instead of taking into account the better developed record and arguments from this defendant, the CAFC just punts. At least they didn’t make the decision precedential.

  2. 7

    The Federal Circuit usually declines to give stare decisis effect to prior precedential validity rulings because they are intertwined with the particular factual and evidentiary record that produced them. The difference here is that “Step One” of Alice is basically a legal determination based on the intrinsic evidence, similar to claim construction. The outcome here is thus consistent with Federal Circuit decisions that gave stare decisis effect to prior Federal Circuit decisions construing claim terms from the same patent.

    1. 7.1

      I hear you – and in a sense, this is something that should constrain courts in “pre-emptively” dismissing lawsuits (or even worse, making broad assertions that a granted patent is plainly not eligible from the bench prior to any digging into the particular case’s facts).

    1. 6.1

      I’ll get my day don’t you worry Eddie and Jimmy. And as for your Gordian knot, there is no such thing regarding the two distinctly different cases. The only connection is they both are full of oppression, felonies, and blackmail

  3. 5

    “Unlike the district court in AngioDynamics, the district court here performed a full two-step Alice analysis. The district court also considered a significantly more developed record than the one in AngioDynamics, including multiple prior art references, Bard’s admissions that it did not invent radiopaque identifiers, and Bard’s admissions that adding radiopaque identifiers to ports would be trivial. . . . Bard’s reliance on AngioDynamics is misplaced.”

    And therein lies the rub. If the invention is obvious, then that can be argued as a basis for invalidity.

  4. 4

    Is the invention a process? No, it’s plainly a manufacture.

    Eligible.

    If claimed as a method, is the useful result of the method some species of information? No. The useful result of the method is a detectable radiographic marking.

    Eligible.

    Is the invention obvious? I have no idea, that would require experts opining about PHOSITA.

    Would it be useful if district courts had a specific procedural step to construe the invention prior to an eligibility analysis?

    The invention is a separate entity than the claims. I can’t see how it can be philosophically otherwise.

    Errr….obviously.

    1. 4.1

      The invention is a separate entity than the claims

      Please stop embarrassing yourself.

      I refuse to see how it can be philosophically otherwise.” – corrected.

        1. 4.1.1.1

          I could have included that as well in my reply to you, seeing as you continue to beat your same dead horse.

    2. 4.2

      “ If claimed as a method, is the useful result of the method some species of information? No. The useful result of the method is a detectable radiographic marking.”

      At the risk of appearing to support your “test” (which I don’t), can I ask you why “a detectable radiographic marking” is not a “species of information” in the context of this alleged invention?

      1. 4.2.2

        I could have been clearer- I was ignoring claim 5. I was considering the utility of the method of radiographic marking itself- which is the detection of any mark, and should be eligible, although obvious per your knowledge.

        The alphanumeric message indicating that the assembly is power injectable would not be eligible under my test. If infringing utility was a message said “look both ways before crossing” or “Buy TSLA @ $20” it would be equally ineligible.

        The Printed Matter Doctrine is an eligibility test that arrives in the same place: the radio opaque mark is a substrate, the label power injectable is printed information.

        1. 4.2.2.2

          … as for your (lack of) understanding of the Printed Matter Doctrine, may I (yet again) suggest that you talk to your patent attorney and have him explain the important exceptions to that doctrine.

          Goodness knows you refuse to listen to your betters here.

    3. 4.3

      “Is the invention obvious? I have no idea, that would require experts opining about PHOSITA.”

      The use of informative radiographic markers in multiple related fields was admitted to be old, and the particular implementation here was admitted to be technically trivial (no teaching away in the art, easy to implement, no unexpected results).

      Would it better for everyone to hire a professional l i a r to create some fake controversy that can be litigated to the tune of hundreds of thousands of dollars?

      1. 4.3.1

        You’re a real gem and I bet that you think the presumption of innocence should be disbanded in criminal law, eh?

  5. 3

    The canons of patent law hold that inventors must prevail over an infinite number of attacks on our rights, while our opponents need only to prevail once.

    1. 3.1

      The right for a defendant to be heard in court is an important right. The idea that a single patent victory against one defendant would somehow bulletproof the patent’s validity against all other defendants is, frankly, absurd on its face.

      1. 3.1.2

        Yes, it does seem absurd. What if the first petitioner (A) for invalidity has good commercial reasons of their own to refrain from running one particular potent invalidity attack, (X), and in return the patentee gratefully settles. In my estimation, a not unlikely fact scenario. Indeed, a win-win.

        Then the patentee asserts against another party (B) and, this time, attack X is duly made. Why should B’s hitherto unconsidered attack not be given full consideration?

        In this case though, what might happen next? An enquiry into obviousness perhaps?

        1. 3.1.2.1

          You just cannot help BUT put those EPO Uber Alles spectacles on (and throw your
          C
          R
          A
          P
          at the wall yet again) with your fishing expedition of obviousness, eh?

  6. 2

    Gordian knot my @rs. Destroying what it was only to restore and steal to give back its value is pure and simple.
    You continue to call it common law. That shows you are not an atty. You are a big cloud of fluff.

  7. 1

    A can of worms — given the propensity of the CAFC to not follow its own mandates on respecting prior panel decisions and the HUMONGOUS ball of Gordian Knot with conflicting case law on eligibility….

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