W.L. Gore & Assocs., Inc. v. C.R. Bard, Inc.
| Decision Date | 27 July 2016 |
| Docket Number | C.A. No. 11-515-LPS |
| Parties | W.L. GORE & ASSOCIATES, INC., Plaintiff, v. C.R. BARD, INC. and Bard Peripheral Vascular, Inc., Defendants. |
| Court | U.S. District Court — District of Delaware |
198 F.Supp.3d 366
W.L. GORE & ASSOCIATES, INC., Plaintiff,
v.
C.R. BARD, INC. and Bard Peripheral Vascular, Inc., Defendants.
C.A. No. 11-515-LPS
United States District Court, D. Delaware.
Signed July 27, 2016
UNSEALED ON July 29, 2016
Adam W. Poff, Pilar G. Kraman, YOUNG CONAWAY STARGATT & TAYLOR, LLP, Wilmington, DE, James W. Poradek, Kevin P. Wagner, Elizabeth Cowan Wright, Katherine S. Razavi, Lauren J. Frank, Timothy M. Sullivan, Linzey A. Erickson, FAEGRE BAKER DANIELS
LLP, Minneapolis, MN, Attorneys for Plaintiff W.L. Gore & Associates, Inc.
Jack B. Blumenfeld, Michael J. Flynn, MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE, Steven Cherny, KIRKLAND & ELLIS LLP, New York, NY, Edward C. Donovan, KIRKLAND & ELLIS LLP, Washington, DC, John L. Strand, WOLF, GREENFIELD & SACKS, P.C., Boston, MA, Attorneys for Defendants C.R. Bard, Inc. and Bard Peripheral Vascular, Inc.
MEMORANDUM OPINION
STARK, U.S. District Judge:
Pending before the Court are (1) Defendants C.R. Bard, Inc. and Bard Peripheral Vascular, Inc.'s ("Bard") Motion for Summary Judgment of No Lost Profits and No Standing (D.I. 566) ("Bard's Motion") and (2) Plaintiff W.L. Gore & Associates, Inc.'s ("Gore") Motion for Sanctions Against Bard (D.I. 509) ("Gore's Motion"). For the reasons discussed below, Bard's Motion will be granted in part and denied in part and Gore's Motion will be denied.
I. BACKGROUND
Gore, together with Gore Enterprise Holdings, Inc. ("GEH") (collectively, "Plaintiffs"), sued Defendant C.R. Bard, Inc. for infringement of U.S. Patent No. 5,735,892 ("'892 patent") on June 10, 2011. (D.I. 1) Plaintiffs filed an amended complaint on August 19, 2011, adding Bard Peripheral Vascular, Inc. as a defendant. (D.I. 11) On November 29, 2011, the Court referred the case to Magistrate Judge Christopher J. Burke "to hear and resolve all pretrial matters, up to and including the resolution of case-dispositive motions." (D.I. 20)
On October 18, 2012, pursuant to an Order by Judge Burke granting a stipulation between the parties (D.I. 63), Gore (without listing GEH as co-plaintiff) filed a Second Amended Complaint against Bard, alleging infringement of the '892 patent as well as U.S. Patent Nos. 5,700,285 ("'285 patent") and 8,221,487 ("'487 patent"). (D.I. 64) In its Second Amended Complaint, Gore averred the following:
W.L. Gore & Associates, Inc. is the owner of all right, title, and interest in the '892, '285, and '487 patents, including the right to sue, enforce, and recover all damages, past and future, for all infringements.
...
Gore Enterprise Holdings, Inc. was previously the owner of the '892 and '285 patents and W.L. Gore & Associates, Inc. was the licensee of the '892 and '285 patents with rights to practice those patents in the United States. On January 30, 2012 Gore Enterprise Holdings, Inc. assigned all right, title, and interest in the '892 and '285 patents to W.L. Gore & Associates, Inc., including the right to seek damages for past infringement thereof.
(D.I. 64 at 3) Gore subsequently dropped its assertion of the '487 patent. (D.I. 194 at 3) On September 28, 2015, the Court adopted Judge Burke's recommendation with respect to non-infringement of the '285 patent and granted Bard summary judgment of non-infringement of the '285 patent, leaving only the '892 patent as the basis for Gore's infringement case. (See D.I. 405 at 10-11)
On November 2, 2015, Bard filed a motion to dismiss for lack of subject matter jurisdiction pursuant to Federal Rules of Civil Procedure 12(b)(1) and 12(h)(3). (D.I. 414) The parties completed briefing on Bard's motion on November 24, 2015. (D.I. 415, 453, 471) In support of its motion, Bard argued that (1) there was insufficient evidence of a valid assignment from GEH to Gore of rights to the '892 patent and, (2) even assuming a valid assignment, Gore lacked standing to recover lost profits
damages arising before the assignment. (D.I. 415 at 1-2) In support of the latter argument, Bard argued that Gore was never an exclusive licensee to the '892 patent, citing evidence from state tax proceedings in which Gore personnel represented that Gore was not an exclusive licensee. (See, e.g. , id. at 1)
Gore opposed Bard's motion by arguing that GEH validly assigned all rights related to the '892 patent to Gore, including a right to recover pre-assignment lost profits damages. (D.I. 453 at 1-2. 7-8) Gore also argued that Bard's motion was untimely because evidence underpinning the motion was available to Bard in 2012 but Bard "deliberately" delayed in bringing the motion until late 2015. (D.I. 453 at 13-16)1
The Court heard oral argument on the motion to dismiss at a pretrial conference on November 25, 2015. (See generally Pretrial Transcript ("Tr.") (D.I. 502)) At that point a jury trial was scheduled to begin on December 7. The Court questioned Bard regarding the timeliness of its motion:
THE COURT: When exactly did you have this information in hand? And how soon after that did you file your motion and turn the information over to the plaintiff?
MR. BLUMENFELD: I can answer that fairly precisely in terms of when it started because I remember we were sitting in a conference room on Sunday, October 11th of this year, 2015, talking about this. And shortly after that, we started investigating, doing Internet searches to see what we could find about the relationship between Gore and GEH. So I can't tell you the exact dates after that.
THE COURT: So to the extent there is a suggestion you have been sitting on this argument for a year or two or some substantial amount of time and you threw it at us to blow up everybody's trial preparations, you would say not guilty. We have started this October 11th.
MR. BLUMENFELD: That is correct, Your Honor.
(Id. at 24-25) In light of the issues raised by Bard's motion, and given the proximity to trial, the Court bifurcated the issue of damages for a later trial. (Id. at 110)
The parties appeared for trial on non-damages issues on December 7, 2015. (See Trial Tr. (D.I. 503)) At the outset, Gore raised an objection to Bard's use of two slides prepared for Bard's opening statement. (Id. at 7-8) The slides referred to an expert report authored by Dr. David Teece ("Teece Report"), which Gore had submitted during the tax proceedings cited in Bard's motion to dismiss briefing. (Id. ) Gore objected to Bard's use of the Teece Report on the bases of hearsay and lack of relevance. (Id. at 8) Bard responded that its slides contained excerpts of the Teece Report that originated from "knowledgeable Gore people," rather than Dr. Teece himself, and argued that the slides were therefore party admissions and not hearsay. (See id. at 12-13) In addition, Bard argued that the slides were relevant because Gore intended to prove secondary considerations of non-obviousness, which Bard would seek to rebut with the Teece Report's characterization of the '892 patent as a "minor improvement." (Id. at 9, 13) Gore confirmed that it planned to present argument regarding the relative importance of the '892 patent, including argument
related to long-felt need as a secondary consideration of non-obviousness. (Id. at 18-19)
Bard moved to continue the trial and requested additional discovery related to the tax proceedings, explaining that it found the Teece Report from publicly available sources and did not know whether additional, related documents existed. (Id. at 14-15) Bard also noted that Gore had not produced the Teece Report during discovery despite Bard's request for "all documents regarding the '892 patent." (Id. at 9) The Court asked Gore if it had searched for additional documents since the time Bard had first referenced the tax proceedings in support of Bard's motion to dismiss. (Id. at 20) Gore responded that it had not. (Id. )
After a recess, Gore informed the Court that it had decided to join Bard's request for a continuance in order to facilitate discovery related to the tax proceedings. (See id. at 27-32) The Court, very reluctantly, granted the parties' joint request for a continuance of trial. (Id. at 34) ("I'm extremely reluctant to grant a continuance of a trial, even a joint request, on the morning when you are all ready for trial, we're ready, and the jury pool is downstairs. So it's not something I really want to do.")
On January 4, 2016, Gore moved for sanctions against Bard. (D.I. 509) The parties completed briefing on Gore's Motion on February 1, 2016. (D.I. 510, 516, 528) In Gore's Motion, Gore argues that Bard falsely stated to the Court that Bard had only recently found the Teece Report and related tax documents in public records. (D.I. 510 at 6-7) Gore contends that counsel for Bard was aware of the Teece Report in 2009 during litigation involving Gore and Bard in the District of Arizona. (Id. at 1-2) Bard opposes Gore's Motion, characterizing it as a "confected conspiracy theory" based on "false accusations against respected members of the Bar." (D.I. 516 at 1) The Court heard argument on Gore's Motion on March 17, 2016. (See D.I. 553 ("Mar. Tr."))
On May 16, 2016, the Court ordered the parties to submit letters on whether...
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