United States Court of Appeals
for the Federal Circuit
__________________________
BARD PERIPHERAL VASCULAR, INC.
AND DAVID GOLDFARB, M.D.,
Plaintiffs/Counterclaim
Defendants-Appellees,
AND
C.R. BARD, INC.,
Counterclaim Defendant-Appellee,
v.
W.L. GORE & ASSOCIATES, INC.,
Defendant/Counterclaimant-Appellant.
__________________________
2010-1510
__________________________
Appeal from the United States District Court for the
District of Arizona in case no. 03-CV-0597, Judge Mary H.
Murguia.
_________________________
Decided: June 14, 2012
_________________________
FRANK P. PORCELLI, Fish & Richardson, P.C., of
Boston, Massachusetts, filed a combined petition for panel
rehearing and rehearing en banc for the defen-
dant/counterclaimant-appellant. With him on the petition
was JOHN A. DRAGSETH. Of counsel on the petition were
BARD PERIPHERAL v. WL GORE 2
JOHN S. CAMPBELL, W.L. Gore & Associates, Inc., of New-
ark, Delaware, and DAVID H. PFEFFER of Boca Raton,
Florida.
JOHN C. O’QUINN, Kirkland & Ellis, LLP, of Washing-
ton, DC, filed a response to the petition for the plain-
tiffs/counterclaim defendants-appellees and counterclaim
defendant-appellee. With him on the response were
NATHAN S. MAMMEN, WILLIAM H. BURGESS, and DENNIS J.
ABDELNOUR. Of counsel on the response were STEVEN C.
CHERNY of New York, New York; and GREGORY G. GARRE
and MAXIMILIAN A. GRANT, Latham & Watkins LLP, of
Washington, DC; and ANDREW M. FEDERHAR, Fennemore
Craig P.C., of Phoenix, Arizona; and JOHN L. STRAND,
Wolf, Greenfield & Sacks, P.C., of Boston, Massachusetts.
PAUL D. CLEMENT, Bancroft PLLC, of Washington,
DC, for amici curiae Verizon Communications Inc. and
Intel Corp. With him on the brief was D. Zachary Hudson.
Of counsel on the brief for amicus curiae Verizon Com-
munications Inc. were JOHN THORNE and GAIL F. LEVINE,
Verizon Communications Inc., of Arlington, Virginia; and
for amicus curiae Intel Corp. was TINA M. CHAPPELL, Intel
Corporation, of Chandler, Arizona. MICHELLE K. LEE,
Google Inc., of Mountain View, California, for amicus
curiae Google Inc. With her on the brief was SUZANNE
MICHEL.
__________________________
Before NEWMAN, GAJARSA, * and LINN, Circuit Judges.
Opinion for the court filed by Circuit Judge GAJARSA.
Opinion concurring-in-part and dissenting-in-part filed by
Circuit Judge Newman.
* Circuit Judge Gajarsa assumed senior status on
July 31, 2011.
3 BARD PERIPHERAL v. WL GORE
GAJARSA, Circuit Judge.
I. Introduction
In deciding the present appeal, this court determined
that the United States District Court for the District of
Arizona (“trial court”) was correct in its judgment and
affirmed all of the conclusions reached by the trial court.
See Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs.,
Inc., 670 F.3d 1171 (Fed. Cir. 2012). The appellant, W.L.
Gore & Associates, Inc. (“Gore”), timely filed a petition for
rehearing and rehearing en banc. Therein, Gore again
faulted the trial court’s willfulness analysis. Separately,
an Amici Curiae brief in support of that petition argued
that the objective prong of willfulness should be consid-
ered a question of law subject to de novo review on appeal.
This court granted the petition for rehearing en banc and
returned the matter to the panel for reconsideration, see
En Banc Order, Bard Peripheral Vascular, Inc. v. W.L.
Gore & Assocs., Inc., No. 2010-1510 (Fed. Cir. June 14,
2012), for the sole purpose of revisiting the issue of will-
fulness and further explicating the standard of review
applicable to it.
The court today reaffirms its opinion issued on Febru-
ary 10, 2012, except for section E and that portion of
section F relating to Section 284 and 285 of Title 35 of the
United States Code allowing for enhanced damages and
attorneys’ fees. 1 The court vacates section E and the
limited portion of section F relating to its prior discussion
of willfulness. The briefs related to the petition for re-
hearing present this court with a new question regarding
the nature of the objective inquiry from In re Seagate
1 The court reaffirms its judgment regarding the
ongoing royalty rates set by the trial court, which would
not be found to be the result of an abuse of discretion even
if there had been no finding of willfulness.
BARD PERIPHERAL v. WL GORE 4
Technology, LLC (“Seagate”), 497 F.3d 1360 (Fed. Cir.
2007) (en banc). The court agrees that the trial court
failed to address the objective prong of willfulness as a
separate legal test from Seagate’s subjective component.
The court now holds that the threshold objective prong of
the willfulness standard enunciated in Seagate is a ques-
tion of law based on underlying mixed questions of law
and fact and is subject to de novo review. The court
remands the issue of willfulness so that the trial court
may reconsider its denial of JMOL of no willful infringe-
ment in view of this holding. If the court grants the
JMOL, it should then reconsider its decisions on enhanced
damages and attorneys’ fees.
II. Discussion
A finding of willful infringement allows an award of
enhanced damages under 35 U.S.C. § 284. Seagate,
497 F.3d at 1368. Because Supreme Court precedent
requires a showing of recklessness before civil punitive
damages are allowed, Seagate overruled this court’s
previous standard for willfulness, which was “more akin
to negligence.” Id. at 1371. Seagate established a two-
pronged test for establishing the requisite recklessness.
Id. Thus, to establish willful infringement, “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.” Id.
Once the “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.” Id.
The Seagate court “le[ft] it to future cases to further
develop the application of this standard.” Id. Following
Seagate, this court established the rule that generally the
“‘objective’ prong of Seagate tends not to be met where an
accused infringer relies on a reasonable defense to a
5 BARD PERIPHERAL v. WL GORE
charge of infringement.” Spine Solutions, Inc. v. Med-
tronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1319
(Fed. Cir. 2010). Thus, the question on appeal often posed
is whether a defense or noninfringement theory was
“reasonable.” See, e.g., Powell v. Home Depot U.S.A., Inc.,
663 F.3d 1221, 1236 (Fed. Cir. 2011).
The ultimate question of willfulness has long been
treated as a question of fact. See, e.g., Stryker Corp. v.
Intermedics Orthopedics, Inc., 96 F.3d 1409, 1413 (Fed.
Cir. 1996) (“The court’s finding of willful infringement is
one of fact, subject to the clearly erroneous standard of
review.”). And the court has made similar statements
even after Seagate. See, e.g., Cohesive Techs., Inc. v.
Waters Corp., 543 F.3d 1351, 1374 (Fed. Cir. 2008) (“‘The
court’s finding [on] willful infringement is one of fact,
subject to the clearly erroneous standard.’” (quoting
Stryker Corp., 96 F.3d at 1413)); i4i Ltd. P’ship v. Micro-
soft Corp., 598 F.3d 831, 859 (Fed. Cir. 2010) (citing
Cohesive Techs, 543 F.3d at 1374, and stating “will-
ful[ness] is a question of fact”), aff’d, 131 S.Ct. 2238
(2011); Powell, 663 F.3d at 1228 (citing i4i, 598 F.3d at
859); Spine Solutions, 620 F.3d at 1319 (citing i4i,
598 F.3d at 859). The court has not been called upon,
however, to clearly delineate the standard applicable to
Seagate’s objective test.
Since Seagate, however, even in those cases that have
continued to recite the general characterization that
willfulness ultimately presents a question of fact, our
opinions have begun to recognize that the issues are more
complex. For example, while this case was on appeal this
court in considering the objective prong clarified that “the
answer to whether an accused infringer’s reliance on a
particular issue or defense is reasonable is a question for
the court when the resolution of that particular issue or
defense is a matter of law” but it “is properly considered
BARD PERIPHERAL v. WL GORE 6
by the jury” “[w]hen the resolution of a particular issue or
defense is a factual matter.” Powell, 663 F.3d at 1236-37.
After reviewing the Supreme Court’s precedent in
similar contexts, as well as our own, we conclude that
simply stating that willfulness is a question of fact over-
simplifies the issue. While the ultimate question of
willfulness based on an assessment of the second prong of
Seagate may be a question of fact, Seagate also requires a
threshold determination of objective recklessness. That
determination entails an objective assessment of potential
defenses based on the risk presented by the patent. Those
defenses may include questions of infringement but also
can be expected in almost every case to entail questions of
validity that are not necessarily dependent on the factual
circumstances of the particular party accused of infringe-
ment.
In considering the standard applicable to the objective
prong of Seagate, it can be appreciated that “the decision
to label an issue a ‘question of law,’ a ‘question of fact,’ or
a ‘mixed question of law and fact’ is sometimes as much a
matter of allocation as it is of analysis.” Miller v. Fenton,
474 U.S. 104, 113-14 (1985). When an “issue falls some-
where between a pristine legal standard and a simple
historical fact, the fact/law distinction at times has turned
on a determination that, as a matter of sound administra-
tion of justice, one judicial actor is better positioned than
another to decide the issue in question.” Id. at 114; see
also Markman v. Westview Instruments, Inc., 517 U.S.
370, 388 (1996) (applying this test to determine that claim
construction is best left to the judge). We believe that the
court is in the best position for making the determination
of reasonableness. This court therefore holds that the
objective determination of recklessness, even though
predicated on underlying mixed questions of law and fact,
7 BARD PERIPHERAL v. WL GORE
is best decided by the judge as a question of law subject to
de novo review.
When a defense or noninfringement theory asserted
by an infringer is purely legal (e.g., claim construction),
the objective recklessness of such a theory is a purely
legal question to be determined by the judge. See Powell,
663 F.3d at 1236. When the objective prong turns on fact
questions, as related, for example, to anticipation, or on
legal questions dependent on the underlying facts, as
related, for example, to questions of obviousness, the
judge remains the final arbiter of whether the defense
was reasonable, even when the underlying fact question is
sent to a jury. See Powell, 663 F.3d at 1236-37; DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1324 (Fed. Cir. 2009) (explaining that ensnarement
has underlying factual issues but is ultimately a question
of law for the judge that is “‘to be determined by the court,
either on a pretrial motion for partial summary judgment
or on a motion for judgment as a matter of law at the
close of the evidence and after the jury verdict’” (quoting
Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co.,
520 U.S. 17, 39 n.8 (1997))).
Our holding is consistent with similar holdings in
other parallel areas of law. Our precedent regarding
objectively baseless claims, which allow courts to award
enhanced damages and attorneys’ fees under 35 U.S.C.
§ 285, and the Supreme Court’s precedent on “sham”
litigation are instructive. For example, in iLor, LLC v.
Google, Inc., 631 F.3d 1372 (Fed. Cir. 2011), in addressing
the standard for showing objective baselessness for pur-
poses of § 285, a standard which this court explained was
“identical to the objective recklessness standard for en-
hanced damages and attorneys’ fees against an accused
infringer for § 284 willful infringement actions under
[Seagate],” id. at 1377, this court noted that “Section 285
BARD PERIPHERAL v. WL GORE 8
must be interpreted against the background of the Su-
preme Court’s decision in” Professional Real Estate Inves-
tors, Inc. v. Columbia Pictures Industries, Inc. (“PRE”),
508 U.S. 49 (1993). iLor, 631 F.3d at 1376. PRE dealt
with immunity from antitrust liability for bringing law-
suits, which is granted unless the litigation is considered
a sham. 508 U.S. at 51. It held that a suit will not be
considered sham litigation unless the lawsuit is “objec-
tively baseless in the sense that no reasonable litigant
could realistically expect success on the merits. If an
objective litigant could conclude that the suit is reasona-
bly calculated to elicit a favorable outcome,” it is not
objectively baseless. Id. at 60. And like willfulness,
there is a subjective requirement that must be addressed
only after the objective requirement is satisfied. Id.
The PRE Court analogized sham litigation to mali-
cious prosecution and equated objective baselessness to a
lack of probable cause to institute an unsuccessful civil
lawsuit. See PRE, 508 U.S. at 62-63 (explaining that
“[t]he existence of probable cause to institute legal pro-
ceedings precludes a finding that an antitrust defendant
has engaged in sham litigation”). PRE cited, inter alia,
Stewart v. Sonneborn, 98 U.S. 187 (1897) for the view that
when “there is no dispute over the predicate facts of the
underlying legal proceeding, a court may decide probable
cause as a matter of law.” 508 U.S. at 64 (citing 98 U.S.
at 194). 2 Moreover, in the context of probable cause in
2 The Stewart Court also explained the rule when
there are disputed facts:
It is true that what amounts to probable
cause is a question of law in a very impor-
tant sense. In the celebrated case of Sutton
v. Johnstone, the rule was thus laid down:
‘The question of probable cause is a mixed
question of law and of fact. Whether the
9 BARD PERIPHERAL v. WL GORE
criminal cases, the Supreme Court elaborated on the
importance of treating such questions as involving both
law and fact and subjecting them to de novo review, which
“tends to unify precedent.” See Ornelas v. United States,
517 U.S. 690, 697-98 (1996) (stating that “the legal rules
for probable cause and reasonable suspicion acquire
content only through application [and i]ndependent
review is therefore necessary if appellate courts are to
maintain control of, and to clarify, the legal principles”).
In considering the objective prong of Seagate, the
judge may when the defense is a question of fact or a
mixed question of law and fact allow the jury to determine
the underlying facts relevant to the defense in the first
instance, for example, the questions of anticipation or
obviousness. But, consistent with this court’s holding
today, the ultimate legal question of whether a reasonable
person would have considered there to be a high likeli-
hood of infringement of a valid patent should always be
decided as a matter of law by the judge. See DePuy,
567 F.3d at 1324.
circumstances alleged to show it probable
are true, and existed, is a matter of fact; but
whether, supposing them to be true, they
amount to a probable cause, is a question of
law.’ This is the doctrine generally adopted.
It is, therefore, generally the duty of the
court, when evidence has been given to
prove or disprove the existence of probable
cause, to submit to the jury its credibility,
and what facts it proves, with instructions
that the facts found amount to proof of
probable cause, or that they do not.
Stewart, 98 U.S. at 194 (internal quotation marks and
citations omitted). Thus, the question may sometimes be
sent to the jury, but it remains a question of law.
BARD PERIPHERAL v. WL GORE 10
Having clarified the legal standard for Seagate’s ob-
jective willfulness prong, we conclude that remand is
appropriate so that the trial court may apply the correct
standard to the question of willfulness in the first in-
stance. See Weisgram v. Marley Co., 528 U.S. 440, 443
(2000) (stating that “courts of appeals should ‘be con-
stantly alert’ to ‘the trial judge’s first-hand knowledge of
witnesses, testimony, and issues’ [and] should give due
consideration to the first-instance decisionmaker’s ‘feel’
for the overall case.” (quoting Neely v. Martin K. Eby
Constr. Co., 386 U.S. 317, 325 (1967))). In this case, Gore
asserted several defenses that it says were “reasonable”:
inventorship, inadequate written description, obvious-
ness, and anticipation. Appellant’s Br. 57-58. The trial
court, which did an exemplary job presiding over this
complex case, did not have the benefit of this court’s
clarification, and did not review those defenses under this
standard. See Bard Peripheral Vascular, Inc. v. W.L. Gore
& Assocs., Inc., 586 F. Supp. 2d 1083, 1088-89 (D. Ariz.
2008). On remand, therefore, the court should determine,
“based on the record ultimately made in the infringement
proceedings,” whether a “reasonable litigant could realis-
tically expect” those defenses to succeed. See iLor,
631 F.3d at 1378; PRE, 508 U.S. at 60. If, in view of the
facts, the asserted defenses were not reasonable, only
then can the jury’s subjective willfulness finding be re-
viewed for substantial evidence. See Powell, 663 F.3d at
1236.
For the foregoing reasons, the previous determination
of willfulness is vacated and remanded for further pro-
ceedings consistent with this opinion.
AFFIRMED IN PART, VACATED IN PART
AND REMANDED IN PART
No costs.
United States Court of Appeals
for the Federal Circuit
__________________________
BARD PERIPHERAL VASCULAR, INC.
AND DAVID GOLDFARB, M.D.,
Plaintiffs/Counterclaim
Defendants-Appellees,
AND
C.R. BARD, INC.,
Counterclaim Defendant-
Appellee,
v.
W.L. GORE & ASSOCIATES, INC.,
Defendant/Counterclaimant-
Appellant.
__________________________
2010-1510
__________________________
Appeal from the United States District Court for the
District of Arizona in Case No. 03-CV-0597, Judge Mary
H. Murguia.
__________________________
NEWMAN, Circuit Judge, concurring in the vacatur, dis-
senting from the partial remand.
The court now acts to correct its ruling on the subject
of willful infringement. However, the panel majority does
not explain why a remand is necessary at all in light of
BARD PERIPHERAL v. WL GORE 2
the standard enunciated. On the correct standard, it
seems clear that remand is unnecessary.
The general standard for willful infringement accom-
panied by multiplication of damages is whether the
accused infringer acted unreasonably and with knowledge
that it was infringing a valid patent. Thus the determi-
nation includes an estimation of the reasonableness of the
accused infringer’s view of patent validity and infringe-
ment, in view of all facts that could reasonably be in-
cluded in the evaluation. As to whether Gore met the
standard of willful wrongdoing, culpable action must be
shown with sufficient definiteness to warrant the discre-
tionary penalty of multiplication of damages, an aspect
that invokes equity as well as law and judgment.
Gore’s actions involve a host of potentially relevant
facts that Gore could reasonably have believed would
invalidate the Goldfarb patent or support Gore’s right to
continue to produce the Gore-Tex® grafts as it had for the
28 years of patent pendency; including (1) the ruling of
the Patent and Trademark Office, affirmed by the Federal
Circuit, that Gore’s employee Cooper was the first to
conceive of the invention that was patented by Goldfarb;
(2) the fact that Cooper provided Goldfarb with the Gore-
Tex® tubes that Goldfarb patented; (3) the fact that
Goldfarb tested the tubes in dogs at Cooper’s request; (4)
the fact that others had previously tested the Gore-Tex®
tubes in dogs and sheep, and had reported and published
the same results that Goldfarb later patented; (4) the fact
that the Goldfarb application was pending for 28 years,
leaving doubt as to the outcome in the Patent Office. It is
not irrelevant that the eventual allowance of the Goldfarb
application included the admitted perjured affidavit of
Denton, an affidavit that Denton asked Goldfarb to with-
draw, and was refused.
3 BARD PERIPHERAL v. WL GORE
When these aspects are considered, it is apparent that
willful infringement is not supportable. However, if the
court insists on retrial of willfulness, the appealed issues
of validity and inventorship are relevant, for if Cooper has
sole or joint inventorship rights or the right to use his
prior information, the question of infringement evapo-
rates, mooting any question issue of willfulness.
Thus this court should review the issues of validity
and inventorship on this appeal, and if appropriate order
retrial of the entire case, in the interest of justice.