$185 Million Patent Verdict Holds Up as Supreme Court Refuses to Address Joint-Inventor Question

$185 Million Patent Verdict Holds Up as Supreme Court Refuses to Address Joint-Inventor Question

The Supreme Court yesterday refused to review a patent case that resulted in a $185 million jury verdict for catheter maker, C.R. Bard Inc. W.L. Gore & Assocs. v. C.R. Bard, 2013 U.S. LEXIS 626 (U.S. 2013) [enhanced version available to lexis.com subscribers].

The patent involved prosthetic vascular grafts fabricated from highly-expanded polytetrafluoroethylene and used to bypass or replace blood vessels to assure adequate and balanced blood flow to particular parts of the body.

The petitioner, W.L. Gore & Assocs.asked the Court whether it was consistent with 35 U.S.C. § 116 to deny joint-inventor status to the maker of the novel material, and instead deem the experimenter the sole inventor, on the ground that the maker did not communicate to the experimenter the exact property that turned out to be key.

"The opinion below has declared a novel and rigid rule for establishing joint inventorship," Gore argued, "leading to a blatantly incorrect result. ... The Federal Circuit's misguided new rule, unless corrected before it takes root, will have harsh real-world consequences. As Congress recognized in its 1984 amendments to Section 116, the realities of modern team research demand a liberal joint-inventorship standard."

A jury awarded Bard lost profits in the amount of $102,081,578.82, reasonable royalties in the amount of $83,508,292.20 and set a reasonable royalty rate of 10 percent, which the district court increased. The district court also enhanced damages by a factor of two.

Last February, the Federal Circuit affirmed [enhanced version available to lexis.com subscribers] the verdict. Four months later, the Federal Circuit reaffirmed [enhanced version available to lexis.com subscribers] its February opinion, except the portion relating to 35 USC §§ 284 and 285 allowing for enhanced damages and attorneys' fees.

"[T]he trial court failed to address the objective prong of willfulness as a separate legal test from Seagate's subjective component," the court said, citing In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007) [enhanced version available to lexis.com subscribers]. "The court now holds 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."


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