Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc.

unmistak- not contain sion did

able error. VASCULAR,

BARD PERIPHERAL M.D., Goldfarb, Plaintiffs/Counterclaim David

INC. and s-Appelle

Defendant

es, Bard, Counterclaim

C.R.

Defendant-Appellee, ASSOCIATES, INC.,

W.L. GORE

Defendant/Counterclaimant-

Appellant.

No. 2010-1510. Appeals, Court of States

United

Federal Circuit. 14, 2012.

June

Associates, Inc., Newark, DE, and Raton, David H. of Boca FL. Pfeffer O’Quinn, Ellis, LLP, John & C. Kirkland DC, response of Washington, filed a petition plaintiffs/counterclaim de- fendants-appellees and counterclaim defen- him dant-appellee. response With on the Mammen, were Nathan S. H. Bur- William gess, and Dennis J. Of coun- Abdelnour. response Cherny sel on the were Steven C. York, York; Gregory of New New and G. Grant, Garre A. Latham and Maximilian & LLP, DC; of Washington, Watkins Federhar, Craig Andrew M. Fennemore P.C., Phoenix, AZ; Strand, L. John Wolf, Sacks, P.C., Boston, Greenfield MA. Clement, PLLC,

Paul D. Bancroft DC, Washington, for amici curiae Verizon Communications Inc. and Intel Corp. him Zachary With on the brief D. was Hudson. Of counsel on the brief ami- cus curiae Verizon Communications Inc. Levine, were John Thorne and F. Gail Verizon of Arling- Communications ton, VA; and for amicus Intel Corp. curiae was Chappell, Corporation, Tina M. Intel Chandler, Lee, AZ. Google Michelle K. View, CA, of Mountain for amicus curiae Inc. Google With her on the brief was Suzanne Michel. NEWMAN, GAJARSA,*

Before LINN, Judges. Circuit Opinion for the court filed Circuit Judge Opinion GAJARSA. coneurring-in- part dissenting-in-part filed Circuit Poreelli, P. Richardson, Frank &Fish Judge NEWMAN. P.C., Boston, MA, filed peti- combined GAJARSA, Judge. Circuit panel tion for rehearing rehearing en banc for the defendant/counterclaimant-ap- I. Introduction pellant. petition With him on the Dragseth. John A. Of counsel on peti- deciding present appeal, John Campbell, tion were S. W.L. Gore & court determined that the United States ^[*] Circuit Judge Gajarsa assumed senior status July standard enunciat- District of Arizona for the

District Court court”) (“trial in its based on ed was correct underlying reached of law and fact all of the conclusions affirmed Peripheral subject Bard to de novo review. The court. See and is by trial Assocs., Vascular, v. Gore & the issue of willfulness so Inc. W.L. court remands (Fed.Cir.2012). The trial reconsider its de- 670 F.3d that the court Associates, Inc. Gore no willful in appellant, W.L. nial of JMOL of (“Gore”), for rehear- timely petition grants filed a If court holding. of this view Therein, rehearing Gore JMOL, en banc. it then reconsider its court’s willfulness faulted trial again damages on and attor- enhanced decisions an Amici Curiae analysis. Separately, fees. neys’ argued petition of that support

brief II. Discussion objective prong that question a considered should be A of willful finding This appeal. novo on to de damages an of enhanced un allows award en petition rehearing for granted the court Seagate, der 35 U.S.C. 284. F.3d panel the matter banc and returned Supreme precedent Because Court 1368. Order, reconsideration, En Banc for see requires showing a of recklessness before Vascular, Inc. v. W.L. Peripheral Bard allowed, punitive damages Seagate civil (Fed. Assocs., Inc., No. 2010-1510 &Gore previous this court’s standard overruled 2012), purpose for the sole June Cir. “more akin to which was fur- issue willfulness and revisiting the Seagate negligence.” Id. at 1371. estab standard of review explicating ther establishing two-pronged test for lished to it. applicable Thus, requisite recklessness. Id. infringement, patentee “a opinion establish today The reaffirms its court convincing evi for must show February except issued on infringer despite an F that the acted that of section dence portion E and section that its actions objectively high likelihood and 285 of Title relating to Section 284 patent.” infringement of a valid allowing for constituted Code States United “threshold standard fees.1 Id. Once the damages satisfied, patentee must also demon E and limit- section The court vacates risk ... objectively-defined that relating prior strate this F to its portion ed of section known or so obvious The relat- was either of willfulness. briefs discussion known to the accused should have been rehearing present petition ed to the Seagate infringer.” Id. The court regarding “le[ft] question with new this court develop ap to future cases to further objective inquiry from the nature of the Following Id. plication this standard.” (“Seagate”), LLC Seagate Technology, re banc). (Fed.Cir.2007) (en the rule court established Seagate, 497 F.3d “ ‘objective’ prong of generally the the trial court failed that agrees The court an not be met where objective prong of willful- tends to address relies on a reasonable infringer accused legal test from Sea- separate ness aas infringement.” charge to a court subjective component. The gate’s Solutions, Inc. Medtronic objective Spine the threshold now holds Sofa- if there had been regarding abuse discretion even The reaffirms its court, royalty the trial ongoing rates set of willfulness. no to be result would not be found which USA, Inc., F.3d a particular mor Danek the resolution of issue “[w]hen (Fed.Cir.2010). Thus, ap or defense is factual matter.” 663 F.3d at 1236-37. peal posed often whether defense or noninfringement theory was “reasonable.” reviewing Supreme After See, U.S.A., e.g., Depot v. Home Powell contexts, precedent Court’s similar (Fed.Cir.2011). own, as our simply well we conclude that The ultimate of willfulness has stating a question that willfulness is of fact long been treated as a of fact. oversimplifies the issue. While the ulti See, e.g., Stryker Corp. v. Or Intermedics mate willfulness based on an (Fed. 1409, Inc., 96 thopedics, F.3d 1413 assessment prong Seagate of second of Cir.1996) (“The finding court’s of willful may fact, be a question of also fact, subject infringement is one of to the a requires threshold determination of ob review.”). clearly erroneous standard of jective recklessness. That determination And the has made similar statements objective entails an potential assessment of See, e.g., even after Seagate. Cohesive defenses risk presented by based Techs., Corp., Inc. v. Waters 543 F.3d patent. Those defenses include (Fed.Cir.2008) (“‘The court’s questions of but can also be is one of [on] expected every in almost case to entail fact, subject clearly to the stan erroneous questions of that are not necessari ” (quoting Stryker Corp., dard.’ 96 at F.3d ly dependent on the factual circumstances 1413)); P’ship Corp., Ltd. particular party 141 accused of infringe Microsoft (Fed.Cir.2010) 831, 598 F.3d (citing 859 ment. Techs., 1374, at Cohesive 543 F.3d considering applicable the standard fact”), stating is a question of “willfulness] objective prong to the Seagate, it can be — -, aff'd, 2238, U.S. 131 S.Ct. 180 appreciated that “the decision to label an (2011); Powell, L.Ed.2d 131 663 F.3d at law,’ ‘question ‘question issue 859); (citing Spine 1228 598 F.3d at 141 fact,’ or a ‘mixed of law and fact’ Solutions, at (citing 1319 598 141 is sometimes as much a matter of alloca- 859). F.3d The court has not been Fenton, analysis.” tion as is of Miller v. upon, however, clearly called delineate 104, 113-14, 445, 474 U.S. 106 S.Ct. 88 applicable Seagate’s objec the standard (1985). L.Ed.2d 405 When an “issue falls tive test. somewhere between a pristine legal stan- Seagate, however, Since even in those simple fact, dard and a historical the fact/ cases that have continued to recite law distinction times has on a turned general that, characterization that determination as a matter of sound ultimately presents fact, our justice, judicial administration one actor opinions begun recognize have positioned that the is better than another to decide complex. issues are example, 114, more question.” the issue in Id. at 445; while this appeal case was on this court also S.Ct. see Markman v. Westview considering objective Instruments, 370, 388, clarified 517 U.S. that “the 1384, answer to whether an accused (apply- S.Ct. 134 L.Ed.2d infringer’s reliance on a particular issue or this test to determine that con- claim is reasonable is a question for the struction judge). is best left to the We court when the resolution of that particu- believe that the posi- court is the best lar issue or defense is a matter of law” but for making determination rea- properly by “is jury” considered sonableness. This court therefore holds § a standard which this court ex of reck- objective determination plained was “identical lessness, though on under- predicated even fact, for dam recklessness standard lying against an ac ages fees by judge best decided infringer infringe for 284 willful cused review. to de novo ],” [Seagate ment actions under id. at noninfringe a defense When 285 must this court noted “Section be theory infringer asserted against background ment interpreted construction), the legal (e.g., claim purely in” Supreme Court’s decision Professional theory Investors, such a objective recklessness of Inc. v. Real Estate Columbia Industries, (“PRE”), to be determined purely Inc. Pictures Powell, at 1236. judge. F.3d 113 S.Ct. 123 L.Ed.2d 611 U.S. on fact objective prong (1993). iLOR, turns When the F.3d at 1376. PRE related, example, to antic questions, as immunity from liability dealt with antitrust dependent on ipation, legal questions lawsuits, or on granted bringing which un related, facts, for exam underlying as the litigation less is considered a sham. obviousness, the judge ple, to U.S. at S.Ct. It held 508 the final arbiter whether litiga remains a suit will not be considered sham reasonable, even when the “objectively defense tion unless lawsuit base jury. to a underlying fact sent litigant in no less the sense that reasonable 1236-37; DePuy 663 F.3d at expect realistically could success on the Danek, Spine, Inc. Medtronic v. objective litigant merits. If an could con Sofamor (Fed.Cir.2009) 1314, Inc., 567 F.3d 1324 reasonably clude that suit is calculated underly ensnarement has outcome,” (explaining it is to elicit a favorable not ultimately a ques 60, but is factual issues objectively baseless. Id. at 113 S.Ct. “ judge that is ‘to be tion of like there is a 1920. And sub court, pre either on a determined jective requirement that must be ad partial summary judgment trial motion for objective only require after the dressed or on a motion for as matter ment is satisfied. Id. law the of the evidence after at close litiga analogized The PRE Court sham jury (quoting verdict’” Warner-Jen equated prosecution, tion to malicious Co., Inc. v. Hilton Davis Chem. kinson objective probable to a lack of baselessness Co., 17, 8, 1040, 39 n. 117 S.Ct. 520 U.S. to institute an unsuccessful civil law cause (1997))). 137 L.Ed.2d PRE, 62-63, 508 U.S. suit. See holding is consistent with similar

Our (explaining that existence “[t]he S.Ct. 1920 in areas of law. holdings parallel other legal pro to probable cause institute regarding objectively base- precedent Our ceedings precludes that an anti claims, to less which allow courts award in liti engaged trust defendant has sham cited, alia, un- damages fees PRE inter v. gation”). Stewart 285, Sonneborn, 187, Supreme der 35 U.S.C. 98 U.S. L.Ed. 116 (1897) precedent litigation on “sham” are is no Court’s for the view when “there iLOR, in LLC example, predicate over the facts dispute instructive. (Fed.Cir. legal Google, underlying proceeding, v. 631 F.3d 1372 of law.” 2011), addressing probable for show- cause as matter in the standard decide 64, (citing 113 S.Ct. 1920 of 508 U.S. at ing objective purposes baselessness for 194).2 Moreover, U.S. in the context of the first instance. See Weisgram Mar probable cases, cause criminal Su- Co., ley 440, 443, 528 U.S. 120 S.Ct. preme Court importance elaborated 145 L.Ed.2d 958 (stating that of treating such questions involving appeals “courts of constantly ‘be both law and fact subjecting them to alert’ to judge’s ‘the trial first-hand knowl review, de novo unify which “tends to prec- edge witnesses, testimony, and issues’ edent.” States, See Ornelas v. United give [and] should due consideration 690, 697-98, U.S. 116 S.Ct. 134 first-instance ‘feel’ decisionmaker’s for the L.Ed.2d 911 (stating that “the overall case.” (quoting Neely v. K. Martin rules for probable cause and reasonable Co., Eby Constr. 386 U.S. 87 S.Ct. suspicion acquire content only through ap- 1072, (1967))). 18 L.Ed.2d 75 case, In this plication independent [and Gore asserted several says defenses that it therefore necessary if appellate courts were “reasonable”: inventorship, inade of, maintain control clarify, quate written description, obviousness, and legal principles”). anticipation. Appellant’s Br. 57-58. The In considering trial court, which did an exemplary job of Seagate, the judge may when the de presiding over this complex case, not did fense is a question of fact or a mixed have the benefit of this clarification, court’s question of law and fact jury allow the and did not review those defenses under determine the underlying facts relevant to this standard. See Bard Peripheral Vascu instance, the first for exam lar, Inc. v. Assocs., W.L. Gore & ple, the of anticipation or obvi F.Supp.2d 1083, (D.Ariz.2008). 1088-89 But, ousness. consistent with this court’s remand, On therefore, the court should holding today, the legal ultimate question determine, “based on the ultimately record of whether a person reasonable would have made in the infringement proceedings,” considered there to a high be likelihood of whether a litigant “reasonable could realis infringement of a patent valid al tically expect” those defenses to succeed. ways be decided as a matter of law by the iLOR, See 1378; PRE, F.3d at judge. DePuy, 567 F.3d at 1324. U.S. at If, S.Ct. 1920. in view of

Having facts, clarified the the the standard asserted defenses were not Seagate’s reasonable, willfulness prong, only can then jury’s the sub we conclude that remand is jective appropriate so willfulness finding be reviewed for that the trial court may apply the correct substantial evidence. See standard question of willfulness in at 1236.

2. The explained Stewart Court is, also therefore, the rule It generally duty the when disputed are there facts: court, when given evidence has been It is true that probable what amounts to prove disprove or proba- existence of cause question is a very in a im- cause, ble jury submit to the its credi- portant sense. In the celebrated case of bility, and proves, what facts it with in- Johnstone, Sutton v. the rule was thus laid structions that the facts found amount to question down: ‘The probable cause is proof cause, probable they or that do of law and of fact. not. Whether the alleged circumstances Stewart, (internal 98 U.S. at 194 quotation probable true, show existed, omitted). Thus, marks and citations the ques- fact; whether, matter of but supposing sometimes be jury, sent to the but it true, them to be they proba- amount to a remains a of law. cause, ble of law.’ This is generally doctrine adopted. Cooper provided Goldfarb reasons, fact that previous foregoing that Goldfarb the Gore-Tex® tubes and with willfulness is vacated determination (3) patented; the fact that Goldfarb tested consis- further proceedings remanded for request; dogs Cooper’s the tubes opinion. tent with previously that others had tested the fact IN PART, IN VACATED AFFIRMED dogs sheep, tubes the Gore-Tex® IN PART. AND REMANDED PART reported published the same had costs. No patented; that later results Goldfarb application that fact the Goldfarb NEWMAN, concurring in Judge, Circuit doubt pending years, leaving partial vacatur, dissenting from the in the Patent It is not the outcome Office. remand. the eventual allowance of irrelevant that ruling now acts to correct its The court included the ad- application the Goldfarb infringement. of willful Denton, affidavit of perjured mitted However, does not ex- panel majority Denton Goldfarb to affidavit that asked necessary all in why withdraw, a remand plain and was refused. enunciated. On

light of the standard considered, aspects are it is When these standard, re- seems correct is not apparent unnecessary. mand However, if the court supportable. insists willful in- standard for general The appealed is- on retrial of accompanied by multiplication fringement inventorship are rele- sues infring- accused damages is whether the vant, joint Cooper for if has or inven- sole unreasonably knowledge and with acted rights right prior er to use torship his Thus infringing patent. valid information, it was an estimation determination includes any mooting question issue of evaporates, infring- accused the reasonableness willfulness. validity infringe- and patent view of er’s this issues Thus court should ment, all facts that could reason- in view of inventorship appeal, to evaluation. As ably be included if retrial the en- appropriate order met the standard of willful

whether Gore case, justice. in the interest of tire must be culpable action wrongdoing, war- with sufficient definiteness shown discretionary multipli- penalty

rant the aspect that invokes damages,

cation judgment. as well as law and

equity poten- a host of actions involve

Gore’s facts that could rea-

tially relevant Gore I, L.P., (by through Robert the ALPHA invalidate sonably have believed would Partner), SANDS, Part Notice Beta right Gore’s patent support Goldfarb (by through ners, L.L.C., Robert grafts the Gore-Tex® produce continue R, R, Partner), Sands, a M & C Notice years patent pen- it had the 28 R, Partners, L.L.C., (by through ruling of the Pat- dency; including R, Group, L.P., Notice Part Office, by the M & C affirmed and Trademark ent L.P., (by ner), R, R, Group M & C Circuit, employee Coo- that Gore’s Federal through Remainder Sands Charitable Robert of the inven- first conceive per was the a Notice Goldfarb; Unit patented rust—2

Case Details

Case Name: Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc.

Court Name: Court of Appeals for the Federal Circuit

Date Published: Jun 14, 2012

Citation: 682 F.3d 1003

Docket Number: 2010-1510

Court Abbreviation: Fed. Cir.