Bard vs W.L. Gore

Appellate Review of Mixed Question of Fact and Law, Whither Cybor?

Last week in Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., __ F.3d__(Fed. Cir. 2012)(Gajarsa, J.), on reh’g partially superseding prior panel opinion, 670 F.3d 1171 (2012), the Court set a new standard for determining willfulness under In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007)(en banc) and standard for appellate review. The willfulness issue is dealt with in detail by Professor Dennis Crouch, reported elsewhere [FN*].

De Novo Review of Mixed Question of Fact and Law: The Court determined that it should provide de novo appellate review of willfulness even though it expressly acknowledged that the determination involves a mixed question of law and fact. The Court relies upon Supreme Court precedent for its conclusion to apply de novo review of willfulness:

“[I]t can be appreciated that ‘the decision to label an issue a ‘question of law,’ a ‘question of fact,’ or a ‘mixed question of law and fact’ is sometimes as much a matter of allocation as it is of analysis.’ Miller v. Fenton, 474 U.S. 104, 113-14 (1985). When an ‘issue falls somewhere between a pristine legal standard and a simple historical fact, the fact/law distinction at times has turned on a determination that, as a matter of sound administration of justice, one judicial actor is better positioned than another to decide the issue in question.’ Id. at 114; see also Markman v. Westview Instruments, Inc., 517 U.S. 370, 388 (1996) (applying this test to determine that claim construction is best left to the judge). We believe that the court is in the best position for making the determination of reasonableness.”

Applying Miller v. Fenton to De Novo Claim Construction under Cybor: It has long been argued by a significant segment of the Federal Circuit and trial judges as well as of the appellate bar that the Cybor standard of de novo appellate review of claim construction should be reversed. Its rationale is based both on the heavy factual component of the analysis (and the argument that this fact-based decision requires deference to the trial court) but also policy arguments by noted academics and practitioners.

Assuming, arguendo, that the Federal Circuit has discretion under Miller v. Fenton to determine whether it may exercise de novo appellate review, a question must be asked after the fourteen years of experience under Cybor: As per Bard, is it correct to conclude that “the [Federal Circuit] is in the best position for making the determination.[?]”

About Harold Wegner (756 Articles)



Foley & Lardner LLP


Harold C. Wegner is a partner in the international law firm of Foley & Lardner LLP, where he is actively engaged in cutting edge domestic and international patent issues. Domestically, Prof. Wegner focuses upon appellate patent issues as well as reexamination and other complex matters at the U.S. Patent and Trademark Office. Globally, Prof. Wegner crafts strategies for multinational and particularly Chinese and Japanese patent enforcement and management.

Prof. Wegner is the former director of the Intellectual Property Law Program at the George Washington University Law School, where he had been a professor of law; he continues his affiliation with George Washington as member of the Dean’s Advisory Board. He has been a visiting professor at Tokyo University and spent several years as a Mitarbeiter at the Max Planck Institute for Intellectual Property Law in Munich followed by service as a Kenshuin at the Kyoto University Law Faculty.

Prof. Wegner holds degrees from Northwestern University (B.A.) and the Georgetown University Law Center (J.D.). He started his career as a patent examiner. In 1980 he founded his own law firm; in 1994 he merged his practice into the Foley firm.