Friday, February 10, 2012

Patent litigation as Shakespearian tragedy: Bard v. Gore as an insult to judicial process?

The majority noted:

Because we find that there is substantial evidence to support the jury’s verdict of no improper inventorship, anticipation, obviousness, or lack of written description and of willful infringement, and the district court did not abuse its discretion in awarding enhanced damages, attorneys’ fees and costs, and an ongoing royalty, we affirm the judgment.1

Footnote 1 includes the text:

Contrary to the dissent, we are not free to ignore the long history of this case and these prior determinations. We cannot revisit the facts anew, nor meander through the record and select facts like our favorite jelly beans, nor characterize the facts as the Bard would in a Shakespearean tragedy.

Judge Newman's dissent begins:

The court today holds that a person who performs the requested test of a material that is provided to him for testing for a specified use, can then, when the test is successful, patent the material he was provided, for the use for which it was tested.

and continues:

My colleagues hold that Dr. Goldfarb then can enforce this patent against the provider of the Gore-Tex material that he tested. My colleagues on this panel endorse and de- fend these errors and improprieties, and now rule that Gore is the willful infringer of this improperly obtained patent on Gore’s product and use. My colleagues find no blemish in this history of incorrect law, impropriety, questionable advocacy, and confessed perjury. I respectfully dissent.

Newman's footnote 1:

I take note of the panel majority’s observation that this saga has overtones of a Shakespearian tragedy, for these events indeed illustrate that "to be honest, as this world goes, is to be one man picked out of ten thousand." W. Shakespeare, Hamlet, Act II, sc. ii.

Newman further noted:

The law has heretofore been clear that a person who tests a product provided by another, for the purpose designated by the provider, cannot acquire the exclusive right to that product for that use, to the exclusion of the inventor of the use. Such a rule violates the most fundamental premises of patent law and property rights. The panel majority’s endorsement of such a rule will breed much mischief, to the disruption of routine testing relationships.


At a minimum a new trial is required, lest we “make a scare- crow of the law."2 From the panel majority’s ratification of this insult to judicial process, I respectfully dissent.

Footnote 2:

We must not make a scarecrow of the law, Setting it up to fear the birds of prey, And let it keep one shape, till custom make it Their perch and not their terror.
W. Shakespeare, Measure for Measure, Act II, sc. ii.


Post a Comment

<< Home