Bard v. W.L. Gore: Revisiting Willful Infringement (Again)

By Jason Rantanen

Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc. (Fed. Cir. 2015) 14-1114.Opinion.1-7-2015.1
Panel: Prost (author), Hughes (concurring), Newman (dissenting)

Professor Tom Cotter has an excellent write-up of this opinion over on his blog, Comparative Patent Remedies.   The main issue involves willful infringement: applying the de novo standard of review to the objective prong of the willfulness inquiry, as per Seagate and the earlier Bard decision, the majority affirmed the district court’s conclusion that Bard willfully infringed because its noninfringement defense is not “susceptible to a reasonable conclusion of no infringement. ” Judge Hughes wrote separately to reiterate his “belief that the full court should review our willfulness jurisprudence in light of the Supreme Court’s recent decisions” in Highmark  and Octane Fitness.  Judge Newman dissented; in her view, the majority failed to apply the de novo standard of review required by Seagate; applying that standard, the district court erred.   Judge Newman also questioned the imposition of double damages.

Judge Hughes’ concurrence, like Judge O’Malley’s concurrence in Halo v. Pulse last fall, suggests that the Federal Circuit remains divided on the appropriate legal standard for willful infringement post-Highmark and Octane Fitness.  Panels remain bound by the de novo standard set out in Seagate, but Judges Hughes and O’Malley strongly believe that the court should reconsider that precedent.  It may be only a matter of time before the Federal Circuit either addresses this divide en banc or the Supreme Court grants cert.  It’s also possible that the Court will provide some guidance on the issue in Commil v. Cisco; we’ll know later this year.


18 thoughts on “Bard v. W.L. Gore: Revisiting Willful Infringement (Again)

  1. 9

    The bit in Prost’s decision about the relationship between (a) the “recklessness” of the defendant’s positions on validity and (b) the fact that one of out of three judges on the panel would find no willfulness is interesting.

    It’s one thing for a couple judges on the Federal Circuit to have a reasonable disagreement with the views of one of their colleagues. It’s another to hold, as a matter of law, that that those particular views are, implicitly, “reckless”.

    Is there an obvious downside to instituting a rule or principle (or even a “guideline”) that, when three judges can’t agree that a defendant’s behavior was objectively reckless that fact alone (i.e., a dissent that would find no recklessness) should weigh heavily against a finding that the conduct was, in fact, reckless, or at least against the imposition of damage-doubling sanctions?

    [For the record, I haven’t revisited the massive pile of facts in this long running dispute (over a quarter century!) so I don’t presently have a strong opinion on the correctness of either the majority or the dissent’s views on the ultimate question]

  2. 8

    MM, have you looked at this case? Newman contends that the patent was obtained by fraud, and perjury was admitted. The district court dismiss the IC charges on lack of materiality grounds. Newman says, “Nonsense.”

    Cooper conceived of the invention, but needs testing. Cooper gives samples to Goldfarb who tested them per Cooper’s request. Cooper then files a patent application on the invention naming himself as inventor. Goldfarb then files a patent application on the invention naming himself as the inventor.

    An interference is declared. Cooper is declared the first to conceive, Goldfarb the first to reduce. On the issue whether Goldfarb’s reduction inures to Cooper, one Detton committed perjury, but the PTO relied on it to hold no inurement.

    Just on these facts, I do not see how Goldfarb is an inventor at all, but clearly he got his patent through the benefit of perjury.

    The ways of the PTO are mysterious, but the result here seems contrary to justice.

    I hope Fed. Cir. takes this case en banc once more and reverses.

    Ultimately, I hope someone takes the issue of whether Goldfarb is even an inventor to the Supreme Court. Newman seems to be the only one getting it right to this point.

    1. 8.1


      In your view, what exactly receives de novo review here? The last decision? The entire case?

      I tend to doubt that this multi-decades long saga can be adequately discussed on a blog.

    2. 8.2

      Ned I’m not an expert on the factual history of this case nor will I ever be.

      But unless Newman is lying or is recklessly confused about the facts she is reporting, the willfulness finding by the majority seems incorrect. It would seem easy enough to confirm the accuracy of Newman’s description … I’m a bit dubious about the Supreme Court deciding to engage in that process, however.

  3. 7

    I tend to agree with Mr. Morgan – I didn’t follow the entire history but it appears that there should have been issue preclusion from the interference – was the interference appealed? Maybe the judges didn’t like the second bite during the infringement litigation.

  4. 6

    J. I’m somewhat troubled by the panel’s reluctance to squarely consider the New Supreme Court precedent – both here and in the Petrella situation. New teaching from the Supreme Court should empower the appellate panels to overturn prior Federal Circuit precedent without requiring en banc rehearing.

    1. 6.1

      Should empower?

      See: Troy v. SAMSON MANUFACTURING CORPORATION, No. 2013-1565 (Fed. Cir. July 11, 2014). link to

      “We conclude that to the extent that our prior precedent, see, e.g., Conservolite v. Widmayer, 21 F.3d 1098, 1102 (Fed. Cir. 1994), held that new evidence on an issue not presented to the Board was generally to be excluded in district court proceedings, it is no longer viable following the Supreme Court’s Hyatt decision. It is established that a later panel can recognize that the court’s earlier decision has been implicitly overruled as inconsistent with intervening Supreme Court authority. See, e.g., Miller v. Gammie, 335 F.3d 889, 899 (9th Cir. 2003) (en banc) (“[C]ircuit precedent, authoritative at the time that it has issued, can be effectively overruled by subsequent Supreme Court decisions that are closely on point, even though those decisions do not expressly overrule the prior circuit precedent.”) (internal quotation marks omitted); see also United States v. Fisher, 502 F.3d 293, 296, 306-07 (3d Cir. 2007); Dawson v. Scott, 50 F.3d 884, 892 n.20 (11th Cir. 1995) (“In view of these intervening Supreme Court precedents, [the prior panel decision] does not control and appears to be overruled.”). We have adopted and applied this principle. See, e.g., Doe v. United States, 372 F.3d 1347, 1354-57 (Fed. Cir. 2004) (concluding that prior precedent has been undermined by intervening Supreme Court decisions, and was therefore “no longer good law”); see also Conforto v. Merit Sys. Prot. Bd., 713 F.3d 1111, 1116-17, 1123-25 (Fed. Cir. 2013) (majority and dissent disagreeing over whether an intervening Supreme Court decision has sub silentio overruled our prior precedent).

      “[T]he issues decided by the higher court need not be identical to be controlling. Rather, the relevant court of last resort must have undercut the theory or reasoning underlying the prior circuit precedent in such a way that the cases are clearly irreconcilable.” Miller, 335 F.3d at 900. Indeed, lower courts are “bound not only by the holdings of higher courts’ decisions but also by their `mode of analysis.'” Id. (citing Antonin Scalia, The Rule of Law as the Law of Rules, 56 U. Chi. L. Rev. 1175, 1177 (1989)); see also United States v. Lindsey, 634 F.3d 541, 550 (9th Cir. 2011) (“W]e are an intermediate court within the federal system, and as such, we must take our cue from the Supreme Court. . . . . Setting [a prior panel’s] holding aside for a moment, in our estimation the case’s reasoning has been fatally undercut by the Supreme Court.”) (emphasis in original).

      This, of course, only addresses whether the Supreme Court’s decision in Hyatt prevents a limitation on evidence based on administrative law principles where such a limitation does not exist in the Federal Rules of Evidence or Federal Rules of Civil Procedure. We conclude that this limitation is inconsistent with the Supreme Court’s decision in Hyatt.”

  5. 3

    As an initial matter, we reject Gore’s argument that the mere fact a member of the previous panel [agreed with them] on this issue indicates that its position was reasonable.

    Granted, I’ve only been following them for a few years, but this about sums up all anyone need think of the CAFC’s legal expertise.

    Otherwise, we would be imposing a rule that any single judge’s dissent on the merits could preclude the determination of willful infringement

    Otherwise known as “The standard we ask of your attorney and your trial judge we refuse to apply to us. But we do claim de novo review of it.”

    You cannot make this stuff up.

    1. 3.1

      Agreed: How do you prove you had an objectively reasonable defense to willful infringement if even successfully convincing an officially objective and reasonable Federal Circuit Judge of that is not sufficient?

      Question: what if you did have an objectively reasonable defense to begin with, but your attorneys blew it for some technical reason? Does that convert it to unreasonable?

      1. 3.1.1

        How do you prove you had an objectively reasonable defense to willful infringement if even successfully convincing an officially objective and reasonable Federal Circuit Judge of that is not sufficient?

        You pay the entire circuit to moonlight en banc for an advisory opinion, of course. That’s the way everybody shows non-willfulness, right?

        Question: what if you did have an objectively reasonable defense to begin with, but your attorneys blew it for some technical reason? Does that convert it to unreasonable?

        Scarier Question: What if you have an objectively reasonable defense that your attorney competently handles and convinces a district court judge, and then you have to stand before a court who couldn’t come to a correct, or even uniform, conclusion on three of the major tenants of your statutory scheme (101, 103, 112, 2nd) over the past decade and they got to review your argument de novo?

        Why have a specialized court at all if you’re going to post an opinion in a $187million case where the majority says your judges don’t adopt reasonable arguments, the concurrence points out you’re fighting amongst yourself for what standard of review to apply and your dissent’s argument is you’re not even completing the review you’re using?

  6. 1

    It is not surprising that the majority wanted to end this litigation, as it is an embarrassing example of patent law malfunction. As noted in the decision itself, the subject patent application was caused or allowed by the PTO to be delayed 28 years before issuing as a patent. Then, this litigation started in 2003, and was caused or allowed by the judiciary to drag on for another 12 years till now.
    Judge Newman’s dissent spells out several invalidity or unenforceability defenses raised by the defendant that she considers sufficiently objectively reasonable enough to avoid willfulness. [Even if insufficient to convince a jury [a vastly different standard].

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