Digest of Bard Peripheral Vascular, Inc. v. W.L. Gore & Assoc., Inc., 2014-1114 (Fed. Cir. January 13, 2015) (precedential). On appeal from D. Ariz. Before Prost, Newman, and Hughes.

Procedural Posture: A jury found the asserted patent valid and that Defendant Gore willfully infringed it, and the district court denied Gore’s motions for judgment as a matter of law. Gore appealed, and the CAFC-panel affirmed. The en banc court denied review but granted rehearing regarding willfulness. The panel vacated the parts of its original opinion discussing willfulness and enhanced damages and attorneys’ fees, held that as to the threshold determination of willfulness, “the objective determination of recklessness, even though predicated on underlying mixed questions of law and fact, is best decided by the judge as a question of law subject to de novo review,” and remanded. The district court again found willful infringement. Defendant Gore again appealed. CAFC affirmed.

  • Standing: Gore contended that at the time of suit, both co-plaintiffs lacked standing to sue—inventor Goldfarb, because he granted all substantial rights to the patent to Bard Inc. (resulting in a “virtual assignment”), and Bard Peripheral Vascular, Inc. (BPV), because Bard Inc. had not properly transferred its rights to BPV for lack of a written instrument. The CAFC rejected Gore’s argument for several reasons. Procedurally, it considered itself bound by the prior panel’s determination that the plaintiffs had standing. On the merits, it held that the 1980 agreement between Goldfarb and Bard Inc. was not a virtual assignment, but an exclusive license, because Goldfarb retained significant rights (e.g., the right to share in damages); that—with respect to Bard Inc.’s 1996 transfer of its interest in the mentioned 1980 agreement to BPV—the grant of a license does not need to be in writing; and that in any event, in 1997 there was a memorialized transfer of the exclusive license from Goldfarb and Bard Inc. to BPV.
  • Willful Infringement: Gore claimed that one of its employees was a joint inventor of the patent in suit, and that the patent was therefore invalid; the CAFC reviewed de novo whether this defense was objectively reasonable under the first prong of the willful infringement-test of Seagate. The CAFC stated that once Gore failed to succeed in related interference proceedings, it “was left with an exceptionally circumscribed scope of reasonable defense.” The CAFC therefore held that Gore’s position was not susceptible to a reasonable conclusion that the patent was invalid on inventorship grounds.

Hughes, concurring:

  • Willful Infringement: The full CAFC should review its willfulness jurisprudence in light of the Supreme Court’s Highmark and Octane Fitness-decisions, which call into question the two-part Seagate-test for determining willfulness and the de novo standard for reviewing the district court’s willfulness determination.

Newman, dissenting:

  • Willful Infringement: The question as it relates to willfulness is whether the defense of invalidity could reasonably be raised, not whether it eventually succeeded. Gore raised several substantial questions challenging the validity and enforceability of the patent, and the judgment of willful infringement therefore cannot stand. Additionally, regardless of whether willfulness was a supportable ruling, the doubling of damages is untenable in light of the public’s interest and medical benefits imparted by Gore’s product, and the district court’s refusal to enjoin its provision.