We will be discussing two Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, June 25, 2012. Brief synopses are presented below.
Bard Peripheral v. W.L. Gore, Case No. 2010-1510 (Fed. Cir. June 14, 2012) (attached).
The District Court for the District of Arizona had previously held that Gore had willfully infringed Bard’s patent and awarded enhanced damages and attorneys’ fees to the patentee. On appeal, the Federal Circuit looked at its previous decision in Seagate, where they defined a two-prong test for willfulness that requires clear and convincing evidence (1) “that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent” and (2) that the infringer had knowledge (or should have known) of this risk.
Willfulness is a question of fact that has been traditionally decided by a jury. The Federal Circuit stated that a court, rather than a jury, should first decide the threshold question of whether there existed an objectively high-likelihood that the infringer’s action’s constituted infringement. The Federal Circuit ruled that this “objective prong” of the test for willful patent infringement is a separate question of law and that it is the trial court’s duty to determine whether the defendant’s actions were objectively reckless. Further, the objective prong will now be subject to de novo review on appeal.
The Federal Circuit stated: “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 infringement.” Slip Op. at 6.
Hollmer v. Harari, Case No. 2011-1276 (Fed. Cir. June 7, 2012) (attached).
The Board of Patent Appeals and Interferences previously held that Harari’s Patent Application No. 09/310,880 (’880) was entitled to priority to the filing date of Harari’s earlier 07/337,566 (’566) application, which preceded the date of conception for Hollmer’s patent. The ’880 application is the latest in a family of applications filed by Harari and claimed priority back to the ’566 application, filed on April 13, 1989. The ’566 application was filed on the same day as another application No. 07/337,579 (’579), also by Harari, and was incorporated into the ’566 application. Harari’s later applications included the same priority language used in the ’566 application, referencing the ’579 application only by specifying that application’s title, inventor name, and by indicating the ’579 application’s filing date as “the same day as the present application.”
Hollmer argued that the later applications in Harari’s applications were ambiguous, because the incorporation by reference statement could have referred to other applications besides the ’579 application. The Board found the statement not ambiguous, because a reasonable patent examiner could have correctly determined that the applications in question referred to the ’579 application.
On appeal, the Federal Circuit disagreed, holding that the correct standard was whether a reasonable person of ordinary skill in the art could have determined what application was referenced. The court determined that the incorporation by reference statement in two of the applications in the chain were ambiguous. Accordingly, the’880 application was only allowed priority to the effective date of the immediately prior application in the family, which was Dec. 20, 1996.
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, June 25, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.
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