Judge Sue L. Robinson recently denied a defendant’s motion to dismiss pursuant to 35 U.S.C. § 101 and to transfer to the District of Utah. C. R. Bard, Inc. v. AngioDynamics, Inc., Civ. No. 15-218-SLR (D. Del. Jan. 12, 2016). At issue were a patented medical procedure and systems relating to the infusion of fluids into a patient. Claim 1 of the ‘478 patent recited: “[a] method of performing a power injection procedure, comprising:
taking an x-ray of a subcutaneously implanted access port in a patient to determine whether the access port includes a radiographic feature indicating that the access port is suitable for flowing fluid at a rate of at least 1 milliliter per second through the access port, the access port defining one or more fluid reservoirs, each fluid reservoir accessible through a cannula-penetrable septum;
identifying the indicating radiographic feature on the x-ray; and
flowing a fluid through the access port at a rate of at least 1 milliliter per second.
The ‘417 and ‘460 patents were directed to injectable vascular access ports through which the ‘478 patent’s method could be implemented.
Judge Robinson agreed with the defendant that the ‘478 patent “involves looking at an x-ray to determine whether the access port carries an identification feature and identifying such feature.” Id. at 24. The Court added, “[w]hile the claim is limited by the presence of the access port, such limitation does not change the conclusion that the ‘determining’ step is an abstract idea.” Id. However, the Court denied the motion to dismiss under section 101 because “the parties’ arguments . . . conflate the §101 analysis with anticipation and obviousness arguments for which the court routinely allows full discovery and makes its decisions based on a full record.” Id. at 25.
Judge Robinson also denied the motion to transfer to the District of Utah, finding that the balance of the Jumara factors weighed against a transfer. Specifically, the Court explained that the “convenience of witnesses” factor is really not about inconvenience, but instead about unavailability. Id. at 5. In this, the defendant failed to indicate that any witness would be unwilling to attend trial in Delaware. The Court also rejected the argument that the plaintiff was forum shopping in order to avoid unfavorable rulings in the District of Utah, explaining that such a decision is no different than a plaintiff “choosing a venue that it believes to be more favorable to its claims for whatever reason.” Id. at 4.