The Federal Circuit Court of Appeals has vacated parts of its February 2012 decision in a long-running patent dispute over a prosthetic vascular graft and remanded the matter for the district court to address the objective prong of the willfulness standard and reconsider its denial of W.L. Gore’s motion for judgment as a matter of law of no willful infringement. Bard Peripheral Vascular, Inc. v. W.L. Gore & Assoc., Inc., No. 2010-1510 (Fed. Cir., decided June 14, 2012). The appellate court’s earlier ruling, which upheld a district court’s decision to enhance the damages verdict against W.L. Gore for willful infringement, is discussed in Issue 30 of this Bulletin.  

The Federal Circuit granted W.L. Gore’s request for rehearing to address “a new question regarding the nature of the objective inquiry from In re Seagate Technology, LLC.” Under Seagate, a two-prong test is used to establish the requisite level of recklessness to justify the imposition of civil punitive damages. Thus, “a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” Once that threshold objective standard is satisfied, “the patentee must also demonstrate that this objectively defined risk . . . was either known or so obvious that it should have been known to the accused infringer.”  

On rehearing, the Federal Circuit agreed that the trial court had failed to consider the objective prong of the standard and further held that “the threshold objective prong of the willfulness standard enunciated in Seagate is a question of law based on underlying mixed questions of law and fact and is subject to de novo review.” While the trial court may “allow the jury to determine the underlying facts relevant to the defense in the first instance, for example, the questions of anticipation or obviousness, . . . the ultimate legal question of whether a reasonable person would have considered there to be a high likelihood of infringement of a valid patent should always be decided as a matter of law by the judge.”  

In a dissenting opinion, Judge Pauline Newman would have ruled on the matter under the newly enunciated standard, finding a remand unnecessary. She contended that willful infringement was not supportable on the record, but, in the alternative, would have remanded for retrial of the entire case.