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 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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