The Federal Circuit affirmed the district court’s willfulness holding, finding that Gore’s lone argument that its defense of invalidity for improper inventorship was not objectively reasonable.  The court analyzed the facts surrounding the inventorship issue, which had previously been determined in an interference proceeding by the PTO.  The court found that each alleged inventor, one an employee of the patentee Bard and the other an employee of Gore, had independently conceived the invention, but Bard’s employee had been the first to reduce to practice and the two persons had not collaborated at all.  The court held that there was no new evidence or theories that were not considered previously and therefore Gore’s inventorship defense was  not objectively reasonable.  Judge Hughes’ concurrence called for a full-court review of its willfulness jurisprudence in light of the Supreme Court’s recent Highmark and Octane Fitness decisions, and specifically seeking to eliminate de novo review so that the court is more deferential to district court findings.  Judge Newman’s dissent argues that the majority does not review and apply the law objectively, but rather searches for and recites adverse evidence.   

Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., Case No. 2014-1114 (January 13, 2015); Opinion by: Prost, joined by Hughes; concurring opinion by Hughes; dissent by Newman; Appealed From: District of Arizona, Murguia, J.  To read the full opinion, please click here.

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