Broad claims with functional language may be easier to enforce. But what opportunities will an accused infringer have to attack the patents in front of the jury? Is written description a worthwhile defense for medical devices tried to a jury?

 

More on Jim Brogan and Abby Parsons.

 

SPEAKERS

Wayne Stacy, Abby Parsons, Jim Brogan

 

00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. I'm Wayne Stacy, your host, the Executive Director for BCLT. And today we're gonna talk about an unusual case that came out bio fronteira. And we have two of the nation's leading biopharma and medical device patent litigators with Jim Brogan and Abby Parsons, both from King & Spalding. So, just want to get right into this case on the bio fronteira issues. Why Why is this case interesting?

 

Jim Brogan  00:38

And well, in some ways, it's not interesting because it's a rejection of summary judgment due to factual issues. But at another level, when you look at what's at play, I think it is interesting, because you're looking at section 101 attacks on what I think before Alice, people would have looked at as pretty clearly patent eligible subject matter where you have multiple light sources connected to a controller that performing a function. But now that we're in this Alice age, you look at the light sources, they output uniform light, people say, hey, lights, a naturally occurring phenomenon. So one on one attack is is fair game here. And so that I think is interesting, I think, also, you know, the interplay of the claims with written description and enablement is interesting.

 

Wayne Stacy  01:26

Well, I mean, the last case that they kind of had this kind of physical structure was, I guess, maybe easy to understand you had Axles. But this one didn't quite get as much attention outside of the medical device field. And I guess my question for you is, for those that are drafting medical device patents, is this a case that should be studied a little more closely?

 

Jim Brogan  01:50

I think I take a look at this case. And I'd also look at the EU versus Apple case that came out of the Federal Circuit. Because there you had, again, something that looked very much like physical structure, the camera with multiple images, sensors, lenses, processors, memory, etc. And what you were doing was using one image to improve or two images together to improve the output. And court said, that's abstract. And therefore out under eligibility, I think if that case was available here to these folks, when they file their summary judgments, you might have seen a little bit different approach, we say, here, what you're doing is you're using multiple light sources to generate uniform light. Although the court did know that, there was no evidence that that was just common, and well known, at least in the record.

 

Wayne Stacy  02:47

So when you when you read the briefing, you can pull out a lot of frustration from bio fronteira. What are they, what are they really complaining about here?

 

Jim Brogan  02:58

You want to run with that one, Abby?

 

Abby Parsons  03:01

Sure. I mean, I think I think the idea is, it's a common thread among several different aspects of patent law that you see, you know, 101, 112 enablement, written description is, is they've got these broad functional claims that cover a universe of things. And, you know, the disclosure just doesn't meet what what the patent office gave them