Bard Wins Latest—and Possibly Final—Round in Patent Fight

, The Litigation Daily

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C.R. Bard Inc. has taken a huge step toward ending its epic patent fight with rival medical device company W.L. Gore & Associates Inc. Judge Mary Murguia, sitting by designation in U.S. district court in Phoenix, ruled on Thursday that Bard can collect more than $800 million in damages from Gore. Murguia also ruled that Gore is on the hook for an additional $205 million, though the company may wage one final appeal over that portion of the case.

As The American Lawyer explained in a 2009 cover story, Bard and Gore have been fighting for decades over who owns the rights to revolutionary vascular graft technology. In April 1974 a Gore plant manager filed a patent on the technology. A few months later, an Arizona cardiac surgeon named David Goldfarb filed an identical patent, asserting that he was the rightful inventor. In 1980 Goldfarb agreed to license his pending patent to Bard. After a long and contentious battle at the Patent and Trademark Office, Goldfarb secured a valid patent in 2002. Bard immediately demanded that Gore take out a license. When negotiations broke down, Bard brought an infringement case against Gore in 2003 in Arizona.

In 2007, a jury sided with Bard and awarded the company $186 million in damages. The jury found that Gore's infringement had been willful. To punish Gore for the willful infringement, Murguia tacked on an extra $186 million in enhanced damages in 2009. She also awarded Bard $19 million in attorney fees. Crucially, Murguia also ordered Gore to pay future royalties and interest. Steven Cherny (then at Latham & Watkins, now at Kirkland & Ellis) led Bard's trial team, which also included Latham parter Maximilian Grant.

Because of that 2009 ruling, the eventual value of the judgment swelled to more than $1 billion, making it one of the largest ever in a patent case. A three-judge panel of the U.S. Court of Appeals for the Federal Circuit affirmed Murguia in February 2012, writing that its ruling was the "final curtain" in the long saga.

It wasn't. In June 2012, an en banc Federal Circuit panel used the case to adopt a new standard for determining willfulness. The court vacated the portion of Murguia's judgment dealing with willfulness as well as the attorney fee award, which, taken together, have a combined value of $205 million.

On remand, Gore's lawyers argued that there had to be a retrial of the entire case. Bard countered that Marguia only needed to revisit the issue of willfulness, arguing that the rest of the verdict is final and nonappealable. At a hearing in June, Cherny urged Marguia to let his client begin collecting on about $800 million of the judgment.

In Thursday's ruling, Murguia gave Bard everything it asked for. She rejected Gore's arguments that it's entitled to a new trial. And she found that, even under the new standard, Gore's infringement was willful. Crucially, she also granted a motion by Bard to execute on the judgment. Since 2009, Gore has been depositing quarterly royalty payments into an escrow account.

Gore can appeal Murguia's latest willfulness ruling, but it's unlikely that the Federal Circuit will breathe new life into the case. We called Gore counsel Juanita Brooks of Fish & Richardson to ask her whether her client intends to file an appeal, but didn't immediately hear back. Kirkland's Cherny declined to comment.

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