Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., No. 2010-1510 (Fed. Cir.  June 14, 2012)

In Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., No. 2010-1510 (Fed. Cir. June 14, 2012), the Federal Circuit establishes a new standard for establishing the objective prong of the willful infringement standard set forth in In re Seagate.  In re Seagate Tech., LLC., 497 F.3d 1360, 1371 (Fed. Cir. 2007).  In Seagate, the Federal Circuit held that willful infringement could be proven by meeting a two-pronged standard, including an objective prong and a subjective prong. The two-pronged test required showing, (1) that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent and, (2) that this objectively defined risk was either known or so obvious that it should have been known to the accused infringer. Previously, the first prong, i.e., the objective prong, was treated as a question of fact for the jury.  In Bard, the Federal Circuit held, “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.”  Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc. No. 2010-1510 (June 14, 2012).

Following Seagate, the Brad decision makes clear that the rule that the “‘objective’ prong of Seagate is not met where an accused infringer relies on a reasonable defense to a charge of infringement.” Id. (citing Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1319 (Fed. Cir. 2010)). Bard addresses the often posed question of whether a noninfringement defense is “reasonable.”  Prior to the Federal Circuit’s decision in Bard, the ultimate question of willfulness had long been treated as a question of fact, the Bard opinion recognized that the decision is somewhat more complex:

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 infringement.

Id.  Therefore, the Bard Court held, “that the objective determination of recklessness, even though predicated on underlying mixed questions of law and fact, is best decided by the judge as a question of law subject to de novo review.” Id.  The Court held that whether the decision was based on a defense rooted in fact or law, the ultimate decision of whether the defense is reasonable remains with the judge.  See id.  The Court stated clearly “consistent with this Court’s holding today, the ultimate legal question of whether a reasonable person would have considered there to be a high likelihood of infringement of a valid patent should always be decided as a matter of law by the judge.” Id.

The Bard opinion has resulted in yet another change to the standard for proving willful infringement of a patent.  The Court’s determination that the ultimate question on the objective prong is to be determined by the judge, rather than the jury, has some repercussions on the role of the jury in patent infringement cases.  Under the new standard, although a jury may be necessary to determine the underlying factual questions on defenses such as anticipation, it is the trial judge who will be the ultimate arbiter of  “the legal question of whether a reasonable person would have considered there to be a high likelihood of infringement of a valid patent.”