C.R. Bard (NYSE:BCR) had no standing to bring the patent infringement lawsuit that won it a nearly $860 million verdict against W.L. Gore & Assoc., Gore argued in its appeal yesterday.
Gore, which has already begun paying out the $857.4 million it owes for infringing a Bard stent graft patent, filed its appeal with the U.S. Court of Appeals for the Federal Circuit Dec. 11. The patent, called "prosthetic vascular graft" or the "’135 patent," was granted in 1974 to Dr. David Goldfarb, who’s also a plaintiff in the current case.
The basis of Gore’s argument is that the plaintiff in the 2003 lawsuit, Bard Peripheral Vascular, lacked standing because the patent was actually licensed to BPV’s corporate parent, C.R. Bard (BPV was then known as IMPRA). Bard contends that the rights to the patent were transferred to BPV in 1996, but Gore alleges that Bard argued in other cases that C.R. Bard owns the patent rights.
"A robust jurisdictional review is essential in this case because the plaintiffs who obtained the enormous money judgment below – IMPRA/BPV and Goldfarb – did not have constitutional standing to file suit. In 1980, Goldfarb conveyed in writing all substantial rights in the ’135 patent to Bard. This means that Goldfarb did not have standing to bring this action. Likewise, while IMPRA/BPV contends that it obtained Bard’s interest in the ’135 patent in 1996, it never produced a written assignment of the ’135 patent as required,” according to court documents. “This means that IMPRA/BPV did not have standing to bring this action. In fact, Bard itself repeatedly told federal courts in the years following the purported transfer of its rights to IMPRA/BPV in 1996 that Bard (not IMPRA/BPV) continued to own the rights to the ’135 patent [emphasis theirs]."
Gore wants the appeals court to vacate the original ruling and order the return of all money paid to Bard, including the $36 million it shelled out in October. A lower court is still determining whether Gore is on the hook for another $206.5 million for willful infringement.
Earlier this fall, a federal judge upheld Bard’s win in the decades-long legal war between the medtech companies, ruling that Gore’s infringement was willful – a decision that opens the door to the possibility of triple damages for Bard.
The legal row dates back to March 2003, when Bard 1st sued Gore for patent infringement. Gore later alleged that 1 of its engineers, Peter Cooper, invented a key claim in the patent in the early 1970s. A federal judge initially ruled that the patent was invented by Goldfarb, who later assigned it to Bard.
The judge’s 1st decision boosted Bard’s $185.6 million jury award to $371.2 million, prompting Gore to appeal. The Federal Circuit upheld the decision 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 this year. In July, the U.S. Patent & Trademark Office upheld the validity of the Bard patent.
