W.L. Gore & Associates asked the U.S. Supreme Court to revisit its $1 billion infringement loss to C.R. Bard (NYSE:BCR) over stent graft patents, saying the high court should determine whether patents must be conveyed in writing.
Gore is on the hook for more than $1 billion in damages owed to Murray Hill, N.J.-based Bard, after the Federal Circuit Appeals Court in January upheld a judgment of willful infringement, tacking on an extra $205 million to the $854 million already owed. In May Bard said it received a willfulness damages payment of $209 million from Gore, which had asked the Federal Circuit for a rehearing and an en banc rehearing; the appeals court rebuffed Gore without comment in April.
In a July 7 petition for certiorari to the Supremes, Gore asked the court to decide whether federal law requires written conveyance for patents:
“Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.” [emphasis added by Gore]
Flagstaff, Ariz.-based Gore argued that there’s precedent in Federal Circuit decisions for other ways of transferring patent rights.
“Despite this clear statutory mandate, the Federal Circuit has developed a body of case law approving of oral and implied transfers of exclusive patent rights, despite the fact that there is no written instrument transferring the exclusive rights. Gore requests that this Court grant its petition for certiorari to correct the Federal Circuit’s misinterpretation of the Patent Act, and make clear that a grant or conveyance of an exclusive license must be in writing,” the company said in the petition.
The case dates all the way back to the early 1970s, when a Gore engineer named Peter Cooper, invented a key claim in the patent, Gore alleged.
Judge Mary Murguia of the U.S. District Court for Arizona initially ruled that the patent was invented by Dr. David Goldfarb, who later assigned it to Bard. Her 1st decision boosted Bard’s $185.6 million jury award to $371.2 million, prompting Gore to appeal. The U.S. Court of Appeals for the Federal Circuit upheld Murguia in February 2012 (sending BCR shares up 2%) and affirmed that judgment in June 2012. Gore’s subsequent appeal to the U.S. Supreme Court in October 2012 was denied early in 2013. That July, the U.S. Patent & Trademark Office upheld the validity of the Bard patent.
But in 2012 the Federal Circuit bench tasked Murguia with reviewing her willfulness finding. In October 2013 Murguia upheld that ruling, finding Gore’s infringement willful and declining to revisit her decision on enhanced damages and legal fees and denying Gore’s bid for a new trial. Gore appealed again to the Federal Circuit, which once again affirmed Murguia.