accused products. And the fact that executive level employees of C.R. Bard are so intimately
involved in the design and testing of BAS products is a strong indication that C.R, Bard plays a
major role in the testing of such products. If C.R. Bard is able to prove that it did not actually test
any of the accused products, then it may be liable at most for inducement of infringement under
Section 271(b). At this stage, however, because Mahurkar has demonstrated a dispute of fact as
to whether C.R. Bard tests the accused catheters for quality assurance and government
campliance, C.R. Bard's motion for summary judgment is denied.
CONCLUSION

For the foregaing reasons, the court denies Defendant C.R. Bard’s motion for partial

summary judgment (Doc, No. 18-1). Plaintiff Mahurkar’s motion to strike the errata sheet of

Timothy Ring (Doc. No. 48-1) is also denied.

ENTER:

Dated: February 13, 2003
REBETCA R. PAI
United States District

13



Cc. Brochures and Promotional Information

Mahurkar submitted a brochure to the court which advertises a variety of products, including
the Optiflow catheter. The court presumes the brochure was published by C.R. Bard because
“CR. Bard, Inc.” appears in the upper left hand corner of the cover page, and neither party has
argued otherwise. (Ex. 14 to Faraci Decl.) Entitled “Advancing the Delivery of Health Gare,” the
brochure states that C.R. Bard is dedicated to advancing health care in three major areas: urology,
vascular, and oncology. (/d.) The brochure states: “In complement to these three areas, Bard also
provides a complete line of advanced surgical specialty products, services and programs,” and
“Bard oncological products and services are designed for the detection, treatment, and
management of various cancers. Products include specialty access catheters and ports. ...” (/d.)

Onone page of the brochure, C.R. Bard advertises “[oJur new Opti-Flow Permanent Dialysis
Catheters... .” (Id.) The top of this page features a “Bard” logo, which appears several times in
the brochure. C.R. Bard owns the trademark to the logo, which consists of the word “Bard,” in
capital, outlined letters, creating a bold effect. The court will hereinafter refer to this as the “BARD
logo.” Ina column on the right hand side of this page, the names and contact information for three
companies, including BAS, are listed. The Salt Lake City address, phone number, and BAS'’s
website are all included. The next page in the brochure features a table listing several products,
each with a corresponding Bard division. C.R. Bard itself is not listed in conjunction with any
product, and BAS is listed as the division corresponding to all catheter products in the table. The
brochure does not define division, nor does it direct the reader to contact the division in order to
purchase the product, although this is a logical conclusion, Below the table, readers are instructed:
“For additional information on Bard products or services, call 1-800-FOR-BARD.” (/d.) This phone
number is staffed by a combination of C.R. Bard employees and employees of its subsidiaries and

divisions.’ (Ring Dep. at 129.) The BARD logo, the C.R. Bard address (in Murray Hill, New Jersey)

4 The parties have not identified whether a caller, upon dialing this number, is
(continued...)



Mahurkar has demonstrated genuine issues of fact concerning C.R. Bard's use or distribution of
the actual products, making the “joint tortfeasor’ concepta viable theory for recovery under Section
271(a)4

2. Does Bard Use, Distribute, or Offer the Accused Products?

a Offer to Sell

The court finally considers whether any material disputes of fact exist regarding whether
C.R. Bard has engaged directly in any of Section 27 1(a)'s prohibited activities. Plaintiff argues first
that C.R. Bard directly infringes the patents-in-suit by offering to sell the accused catheters.

A brief look at the statute's history is enlightening here. In 1993, the United States
completed negotiations on the GATT Uruguay Round Trade Related Aspects of Intellectual
Property (“TRIPS”) agreements. Rotec Industries, Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1251
(Fed, Cir, 2000). As a result of the negotiations, the United States agreed to impose additional
infringement liability in its patent law for “offers to sell.” In 1994, Congress enacted a statute,
allective January 1, 1996, to satisfy the nation’s pledge under TRIPS. /d. Congress offered little
guidance as to the meaning of the phrase, however, and there is little case law from the Federal
Circuit defining the term “offer to sell.” Id. at 1252.

The Federal Circuit has noted that the provision’s underlying policy is to prevent a
competitor from generating interests in a potential infringing product to the commercial detriment
of the rightful patentee. 3D Systems, Inc. v, Aarotech Laboratories, Inc., 160 F.3d 1373, 1379
(Fed. Cir. 1998). More recent pronouncements refine this arquably broad definition of “offer to
sell.” In Rotec Industries, 215 F.3d at 1254-55, the court stated that “offer to sell” liability should
be determined according to the norms of traditional contract analysis, and observed that “[i]n the

absence of a communication with a third party, it is difficult to imagine any commercial detriment

————

‘ The court notes the distinction between the joint tortfeasor theory of recovery and

the tort law concept of joint and several liability, under which two or more parties are held
responsible for a tort because it is impossible to distribute responsibility accurately.

9

ee meme ema aaa aaa aaa a


in BAS product quality assurance. Chris Ganser, Vice President of Quality Assurance atC.R. Bard,
has final authority on whether a BAS product should be recalled or what type of action should be
taken relative to some types of product problems. (/d. at 137.) If Mr. Ganser believes there is a
problem with the quality of a BAS catheter, he can order additional testing on the product, or tell
BAS to recall the product. (/d. at 138.) As a matter of policy, BAS submits all product literature
to C.R. Bard for review and approval. (/d. at 97.) In fact, Mr. Ring stated that BAS probably cannot
iitroduce a new catheter into the marketplace without authorization from an employee of C.R
Bard. (/d, at 101.)
DISCUSSION

A. Standard of Review

Summary judgment is appropriate when there are no genuine issues of material fact and
the moving party is entitled to judgment as a matter of law. Rhone Poulenc Agro, S.A. v. DeKalb
Genetics Corp., 271 F.3d 1081, 1084 (Fed. Cir. 2001); Monarch Knitting Mach. Corp. v. Sulzer
Morat GMBH, 139 F.3d 877, 880 (Fed. Cir. 1998). “In determining whether there is a genuine issue
of material fact, the evidence must be viewed in the light most favorable to the party opposing the
motion, with doubts resolved in favor of the opponent.” Ecolab, inc. v. Envirochem, inc., 264 F.3d
1358, 1364 (Fed. Cir. 2001), quoting Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc.,
145 F.3d 1303, 1307 (Fed. Cir. 1998). The moving party bears the burden of demonstrating the
absence of all genuine issues of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23
(1985).
B. C.R. Bard's Liability Under 35 U.S.C, 271(a)

Section 271(a) of the patent law states:

Except as otherwise provided in this title, whoever without authority makes, uses,

offers to sell, or sells any patented invention, within the United States or imports into

the United States any patented invention during the term of the patent therefor,
infringes the patent.

35 U.S.C. § 271(a). C.R. Bard argues that it cannot be liable under this section because it does



and the C.R. Bard website, are also listed at the bottom of this page. (/d.) The brochure states
that Optiflow is a registered trademark of C.R. Bard. (/d.) No prices are listed in the brochure for
any of the products.

Mahurkar also submitted a brochure giving “Placement Tips” for the Niagara and Niagara
Slim-Cath Short Term Dialysis Catheter. (Ex. 19 to Faraci Decl.) The last page of the brochure
bears the Bard logo, and states that “Niagara is a trademark of C.R. Bard, Inc., or an affiliate.” (Id.)
BAS is listed as the copyright holder of the brochure, and BAS’ address and phone numbers are
listed, apparently to enable consumers to order the products. (/d.)

Mahurkar has also furnished informational materials on a variety of catheter kits, including
the Hemoglide PC-2 Kit, the Hemoglide Kit, the Opti-Flow Kit, the Soft-Cell Kit, and the Flexxicon
and Flexxicon II Acute Dialysis Catheters. (Exs, 1-7 to Faraci Decl.) Ail of these materials bear
the BARD logo. The kits all state that they were “[mJanufactured for: Bard Access Systems” and
“(dlistriputed by: [BARD logo].” (Exs. 1-6 to Faraci Decl.) A single page information sheet on the
Flexxicon products does nat mention BAS; rather, “Vas-Cath Incorporated” appears at the top of
the sheet and the words, “[d]istributed by [BARD logo)" appear at the bottom, (Ex. 7 to Faraci
Decl.)

Db. Regulatory and Quality Control

Project funding for BAS’s research and development must be approved by C.R. Bard. (Ring
Dep. at 23.) C.R. Bard controls regulatory approval for BAS products, as well, Ring acknowledged
that Susan Alpert, the Vice President of Regulatory Sciences for C.R. Bard, has responsibility for
products manufactured or sold by BAS. (/d. at 42.) She supervises BAS ernployees who test
products for government compliance and has final authority regarding submissions of BAS

products to the Food and Drug Administration. (/d. at 66, 172.) Finally, C.R. Bard is also involved

continued)
transterred to a particular division, for example BAS, upon making a request for a specific product.



will have to demonstrate that C. R. Bard’s actions induced infringement on the part of others and
that C. R. Bard knew or should have known its conduct would induce actual infringement.
Circumstantial evidence may be sufficient to prove C. R. Bard's intent to induce infringement. See
Warner-Lambert Co. v. Apotex Corp., 316 F.3d 1348, 1363 (Fed. Gir. 2003).

C. R. Bard has not sought summary judgment on Mahurkar’s § 27 1(b) claim, however. With
respect to Mahurkar’s claim under § 271(a), C. R. Bard is vicariously liable for tts subsidiary's
conduct only if it can pierce the corporate veil, a showing Mahurkar has not made.

b. Joint Tortfeasor Theory

The joint tortfeasor theory is probably the one that fits more comfortably under the heading
“transition-specific.”. The theory was developed in Kingston Dry Dock Co, v. Lake Champlain
Transp. Go., 31 F.2d 265, 267 (2d Cir. 1929), a libel case, in which Judge Learned Hand concluded
Ihat a parent corporation may be liable for the libelous acts of its subsidiary where the parent was
an “actor” in a given transaction giving rise to the libel action. /d, Mahurkar has also pointed out
more recent patent case law indicating that “[w)here the infringement is the result of the
participation and combined actions of the defendants, they are joint infringers and are jointly liable
for the infringement.” McDermott v. Omid Int, Inc., 723 F.Supp, 1228, 1236 (S.D, Ohio 1988);
citing Shields v. Halliburton Ca., 493 F.Supp. 1376, 1389 (W.D. La. 1980) (additional citations
omitted).

The court agrees that this is a viable theory under Section 271(a). To proceed under that
theory, however, Mahurkar must first show that C.R. Bard itself engaged in one of the activities
prohibited by Section 271(a). Otherwise C.R. Bard and BAS would not be “joint” tortfeasors.
Evidence that C.R. Bard executives closely monitor BAS's activities (which Mahurkar certainly has
offered here) is insufficient on its own to support a finding of joint tortfeasor liability. Shie/ds, 493
F.Supp. at 1389. If Mahurkar is unable to prove that C.R. Bard used or offered for sale any of the

accused patents, then at most C.R. Bard can be liable for inducement of infringement, which would

not support a finding of liability under Section 271(a), As explained below, the court concludes that



Minute indedAorm (oer

United States District Court, Northern District of Illinois

OFRCP4(m) Olocal Rule 41,1 CIFRCP4I (a1) OO FRCP4I(a)(2).

errata sheet of Timothy Ring (Doc. No. 48-1) is also denied.

(11) ff [For further detail see order attached to the original minute order.]

Name of Assigned Judge Re fa R. Pallmeyer Sitting Judge if Other
or Magistrate Judge * id than Assigned Judge
a
CASE NUMBER J 01 € 8452 DATE 2/13/2003
CASE Dr. Sakharam D. Mahurkar vs. C.R. Bard, Ine., et al
TITLE
[lu the following box (a) indicate the party filing the motion, ez, plaintilY, defendant, 3rd party plaintif?, andi (h) state briefly the nature
MOTION: of the matian being presented.
DOCKET ENTRY:
qd) Qo Filed motion of | use listing in “Motion” box above.]
(2) Oo Brief in support of motion due
(3) o Answer bricfto motion due. Reply to answer briefdue___
(4) oO Ruling/Hearing on set for at _
(5) a Status hearing set for 4/22/2003 at 9:00 A.M..
(6) oO Pretrial conlerence|held/continued to] [set for/re-set for] on _sctior at
(7) Oo Trialfset for/re-set for] on al
(8) o [Bench/Jury trial] [Hearing] held/continued to at
(9) im ‘This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]

(0) «Wf [Other docket entry] Enter Memorandum Opinion And Order. The court denies Defendant C.R.
Bard’s motion for partial summary judgment (Doc. No. 18-1). Plaintiff Mahurkar’s motion to strike the

No notices required, advised in open court.
‘

No notices required

umber of potices

‘Documeéiit
Number

of | Notices maited by judge's statt,

Notified counsel by telephone,

Docketing to mail notices.

Muil AQ 450 form aT)

Cupy to judge/magistrate judge ine

artsvous

date male notice

courtroom ‘ -
[TV deputy’s
initials 2
Date/lime reveived in
central Clerk’s Office,

mailing depany’iniinks



The court notes that the Federal Circuit has yet to rule on whether an advertisement is
sufficient to be considered an offer to sell under Section 271(a). Hollyanne Corp. v. TFT, Inc., 199
F.3d 1304, 1309, n. 6 (Fed. Cir 4999). Given its more recent analysis of “offer to sell” in Rotec
Industries, it appears likely that for the Federal Circuit to consider an advertisement to be an offer,
at the very least the advertisement must contain detailed product and pricing information. In this
case, neither the website nor the brochure enables a consumer to make an informed choice to
purchase one of the accused products. A prospective buyer might call the 4-800-FOR-BARD toll-
free number, but Mahurkar has not provided the court with information about what information and
services are available to callers. He has not indicated whether callers are able to obtain more
specific information about the catheters, nor whether they may order the products through this
number. Far these reasons, the court concludes that there is not enough information in the
advertisements that would allow a consumer to assent to enter into a bargain.

b. Use or Distribution

Mahurkar also argues that CR. Bard is liable under Section 271(a) because it uses the
accused products, both by distributing and testing them “Use” of a patented invention is defined
broadly. See Roche Prods., inc. v, Bolar Pharm. Co., 733 F.2d 858, 861 (Fed. Cir. 4984) ("Section
271(a) prohibits, on its face, any and all uses of a patented invention.”). Mahurkar correctly points
out that distributing products falls under Section 271(a). LG Electronics, Inc. v. First Intern.
Computer, Inc., 438 F.Supp.2d 574, 585 (D. NJ. 2001). The Federal Circuit has not clarified
whether distribution falls under the “use” or the “sell” provision of the statute, but since Mahurkar
does not contend that C-R. Bard actually sells the accused products, the court will consider his
suggestion that distribution may be a use under the statute. C.R. Bard urges that BAS distributes
the catheters, and states that the only evidence to the contrary are the documents stating
“distributed by Bard” featuring the BARD logo. Although the court agrees with C.R. Bard that this

is not overwhelming evidence of distribution, Mr. Ring himself stated in his deposition that C.R.

11


of the rightful patentee taking place.” /d, at 1255. In Rotec Industries, the patentee sued under
Section 271(a) after the defendant submitted a bid proposal to the Chinese government for a
concrete placing system. /d. at 4249. The bid proposal, including the description of the product
and the proposed price, was finalized in Hong Kong and presented in China All negotiations with
the Chinese government prior to signing the agreement took place in China, and the agreement
was signed in China. /d, at 4250. The court held that the defendant could not be liable under
Section 271(a) because the defendant's offer (the bid proposal) was made outside of the United
States, The court stated that the patentee had adduced no evidence showing that any defendant
communicated a “manifestation of willingness to enter into a bargain [in the United States] so made
as to justify another person in understanding that his assent to that bargain is invited and will
conclude it.” Jd. at 1257, citing Restatement (Second) of Contracts § 24 (1979).

In this case, the court concludes that at most, Mahurkar has demonstrated that C.R. Bard
advertises the accused products. He has not shown that C.R. Bard actually offers them for sale.
The C.R. Bard website does not provide specific information on the accused products, nor does
it include prices. Instead, it directs potential customers to BAS for additional information by
indicating that BAS is the business unit responsible for catheter products. The brochure advertising
the Optiflow catheter does indicate that the product is offered by C.R. Bard, but it does not include
price information, making it difficult for a prospective buyer to “accept” the alleged “offer.” The
brochure is, thus, more analogous to an advertisement than an offer, serving to prompt consumers
to seek out additional information on the product. See Group One, Ltd. v. Hallmark Cards, Inc.,
254 F.3d 1041, 1048 (Fed. Gir. 2001), citing Restatement (Second) of Contracts §§ 26 (1981)
(“[CJontract law traditionally recognizes that mere advertising and promoting of a product may be
nothing more than an invitation for offers, while responding to such an invitation may itself be an
offer."). The communications on the C.R. Bard website and in the brochure, although they do
provide customers with some information about the accused products, do not reveal C.R. Bard's

requisite intent to be bound, an essential aspect of an offer.

10

—————— TT


not itself make, use, offer to sell or sell any of the accused products. Mahurkar concedes that CR.
Bard does not make or sell the accused products, but maintains that C.R. Bard can be held liable
under Section 271(a) for several reasons. First, Mahurkar argues that C.R. Bard is liable under
what he dubs a “transition-specific’ theory of vicarious or agency liability. Second, Mahurkar
argues that there is at least a material dispute of fact regarding whether C.R. Bard uses, distributes
or offers to sell the accused products, thereby warranting the denial of summary judgment.

1. The “Transition Specific” Theory

Mahurkar's “transition-specific” theory of liability appears to rest on two alternate grounds,
which the court will refer to as two separate theories. First, Mahurkar argues that C.R. Bard is
vicariously liable for the actions of its agent or subsidiary, BAS. Second, Mahurkar claims that C.R.
Bard and BAS are joint tortfeasors, and thus C.R. Bard may be found directly liable under Section
27 1{a).

a Vicarious Liability

As for Mahurkar’s theory that C.R. Bard is vicariously liable for the actions of BAS, the
Federal Circuit has held that a corporate parent is liable for infringement by its subsidiary under 35
U.S.C. § 271(a) only if the evidence reveals circumstances justifying disregard of the status of
parent and subsidiary as distinct, separate corporations. See A. Stucki Co. v. Worthington
industries, Inc., 849 F.2d 593, 596-97 (Fed. Cir. 1988); cf, Orthokinetics, Inc. v. Safety Travel
Chairs, Inc., 806 F.2d 1565, 1579 (Fed. Cir.1986) (corporate officers may be held personally liable
far the conduct of the corporation under § 271(a) only by invocation of general principles relating
to piercing the corporate veil). "Mere ownership of stock is not enough to pierce the corporate veil,”
however. A. Stucki Co., 849 F.2d 596, citing Milgo Elec. Corp. v. United Business Communications,
623 F.2d 645, 662 (10th Cir. 1980). Mahurkar does not argue that piercing the corporate veil is
appropriate in this case, and the court agrees the facts do not warrant such an approach here.

Mahurkar also seeks to hold C. R. Bard liable under 35 U.S.C. § 271(b), which imposes

liability on anyone who “actively induces” patent infringement. To succeed on this theory, Mahurkar

7



designation. Faraci concluded from her review that C.R. Bard exercises comprehensive control
over its subsidiaries, including BAS, with respect to development, government regulatory
compliance, safety evaluation, quality assurance, approval, marketing and sales of catheter
products. (Faraci Declaration {| 6, attached to Pl.’s 56.1, hereinafter “Faraci Decl.”) Ms. Faraci
noted, further, that the documents set forth strict standards to which C.R. Bard's subsidiaries must
adhere with respect to the use of the Bard trademark, product packaging and promotional
literature, and numerous other aspects of its subsidiaries’ business. (/d.) Because C.R. Bard
objects to public disclosure of these documents, it is bound by Ms. Faraci’s assessment of them.
B. Internet

A page from C.R. Bard’s website, www.crbard.com/qlobal/accesssystems html, dated
September 12, 2002, indicates that the Vascath and Niagara catheters are available for purchase
through C.R. Bard’s “business unit” BAS. (Ex. 14 to Faraci Decl.) The web page does not contain
price information. It lists the BAS website, address (in Salt Lake City, Utah), and phone and
facsimile numbers (with Salt Lake City area codes). C.R. Bard is headquartered in Murray Hill,
New Jersey. (www.crbard.com.)

C.R. Bard requires all of its subsidiaries to provide direct links on their website to the C.R
Bard website. (Ring Dep. at 72, 76.) A document shown to Mr. Ring during his deposition (but not
submitted to the court), entitled “Bard's website standards,” indicates, according to Ring, that C.R.
Rard wanted a “consistency of look” in accordance with C.R. Bard’s corporate identity guidetines,
to clarify for customers “that various subsidiaries or divisions are all part of C.R. Bard, Inc.” (/d. at
77-78.) The BAS website (www.bardaccess.com) includes a Legal Notice at the bottom of the
home page. Clicking on the words “Legal Notice” opens the page www.crbard.com/copyright/html
which states: “The information, documents and reiated graphics published in this Internet site are
ihe sole property of C.R. Bard, Inc.” The notice also states that no use of the marks on this internet

sile “may be made without the prior, written authorization of C.R. Bard, Inc., except far the sole

purpose of identifying the products or services originating from C.R. Bard, Inc.” (Pl.’s 56.1 [ 23.)



FACTUAL BACKGROUND

In his Second Amended Complaint, Mahurkar claims that Defendants infringed both the
‘561 patent and the ‘155 patent by making, using, importing, distributing, selling and/or offering for
sale a number of products, including: Flexxicon {| Precurve catheters, Niagara curved catheters,
Softcell curved catheters, Optiflow, Hemoglide, Niagara Slim-Cath and other catheter assemblies
with a preformed bend in the catheter or catheter connecting system. (PI's 56.1 973, 4.) CR.
Bard claims that it does not “make, use, sell, offer for sale, or import the accused catheters,” and
therefore cannot be directly liable for patent infringement. (Def.'s 56.1 7:15.)

C.R. Bard provides thousands of products and services in the areas of vascular, urology,
and oncology disease management and also provides surgical specialty products. (Def.’s 56.1
416.) C.R. Bard provides these products and services through a number of business units,
including BAS, a direct subsidiary of C.R. Bard,’ (PI's 56.1911.) Itis undisputed that C.R. Bard
and BAS are legaily distinct and separately incorporated entities. (Declaration of Jean Miller J] 7,
Assistant Secretary of C.R. Bard, ex. Ato C.R. Bard’s Appendix in Support of Motion for Summary
Judgment, hereinafter “Miller Decl.") Mahurkar contends that C.R. Bard is nevertheless liable
because it intimately controls the business of BAS, including the research, development, design,
testing, safety, quality assurance, promotion and distribution of the accused catheter products.
(Pl.'s 56.1 9 15.) In support of his argument, Mahurkar points to certain documents produced by
C.R. Bard in confidence; information accessible on the internet, brochures and promotional
information; and C.R. Bard’s supervision over BAS regulatory and quality assurance issues.
A. Confidential Documents

Roseanne Faraci, an attorney for Mahurkar, reviewed several documents and manuals

provided by C.R. Bard during discovery pursuant to a “confidential-attorneys’ eyes only”

2 C.R. Bard's motion focuses on its relationship with BAS, not Bard Healthcare, but
the court notes that Bard Healthcare is the entity that sells the catheters to BAS. (Deposition of
Timothy Ring, Group President of C.R, Bard at 121, Attached to Pl.’s 56.1, hereinafter "Ring Dep.”)

2



UNITED STATES DISTRICT COURT De- 7a
NORTHERN DISTRICT OF ILLINOIS sf
EASTERN DIVISION Feg if pel
8 2003

DR. SAKHARAM D. MAHURKAR,
Plaintiff,

Vv. No. 01 C 8452

C.R. BARD, INC. and BARD ACCESS

SYSTEMS, INC., and BARD HEALTHCARE,
INC.,

Judge Rebecca R. Pallmeyer

Defendants.

MEMORANDUM OPINION AND ORDER

Plaintiff Dr. Sakharam D, Mahurkar (“Mahurkar’) is a medical doctor and an inventor of
devices used in hemodialysis. Dr. Mahurkar is the named inventor on the two patents involved in
this lawsuit, United States No, 4,808,155 (the “155 patent’), fora “Simple Double Lumen Catheter”
and No, 4,895,561 (the “°561 patent”) for the “Dual Lumen Gatheter Connecting System.”
(Defendant C.R. Bard’s Rule 56, 1(a)(3) Statement of Uncontested Material Facts J 1, hereinafter
“Def.’s 56.1"; Second Amended Complaint ff 7, 8.) Mahurkar filed this action on November 2,
2001, against Defendants C.R. Bard, Inc. (“C.R. Bard"), Bard Access Systems, Inc. (“BAS”), and
Bard Healthcare, Inc. (“Bard Healthcare”) for infringing those patents under 35 U.S.C. §§ 271(a)
(b), and (c). Defendant C.R. Bard has moved for partial summary judgment of noninfringement,
claiming that it does not make, use, sell, offer for sale or import any product accused of
infringement in the lawsuit and therefore cannot be held directly liable under Section 271 (a), direct
patent infringement. C.R. Bard concedes that BAS, its subsidiary, sells the accused products, but
argues that it cannot be held liable for the conduct of BAS. (Pl.'s 56.1 17.) For the following

reasons, the court denies C.R. Bard’s motion. !

' Mahurkar has moved to strike the errata sheet of Mr. Timothy Ring, Group President
of C.R. Bard, who provided a deposition in this case. In its response to the motion to strike, C.R.
bard asserted that the court need not consider the errata sheet in deciding the motion for partial
summary judgment, thereby rendering Mahurkar’s motion moot. Therefore, Mahurkar's motion to
strike is denied, and the court has not considered it in reaching its decision on the current 7



Bard distributes these products.° (Ring Dep. at 455.) Itis possible that as this case proceeds, CR.
Bard will be able to prove that it does not in fact distribute the products. Given that C.R. Bard
requires the BARD logo to appear on most if not ail of its subsidiaries’ literature, it is conceivable
that the “distributed by Bard” language refers to BAS, not C.R. Bard. In ruling on a motion for
summary judgment, however, the court is required to view the evidence in the light most favorable
to the non-moving party. The court concludes here that there is a material dispute as to whether
CR. Bard distributes the accused products.

Mahurkar also argues that C.R. Bard tests the accused catheters, another “use” under
Section 271(a) of the statute. The Federal Circuit has established that testing is a use of an
invention that may infringe under this section. Roche Prods, 733 F.2d at 863. Although the record
is not saturated with evidence of testing by C.R. Bard, Mahurkar has provided enough evidence
to overcome summary judgment on this issue as well, In his deposition, Mr Ring discussed the
roles of various C.R. Bard officers in the development of BAS products and literature. Mr. Ring
stated that Ms. Alpert, the Vice President of Regulatory Sciences for C.R. Bard, is responsible for
the BAS employees who test products for government compliance, and she has authority regarding
submissions of BAS products to the Food and Drug Administration. (Ring Dep. at42.) Mr. Ganser,
the Vice President of Quality Assurance for C.R. Bard, has the final authority on problems relating
to BAS products, and he may order a recall of BAS products (Id. at 137.) Mr. Ganser may also
order additional testing of a product if he wishes. (Id. at 138.) Mr Ring testified at his deposition
that BAS most likely cannot introduce a new catheter into the marketplace without authorization
by an employee of C.R. Bard. (id. at 101.) These facts do not conclusively demonstrate that C.R.
Bard employees test the accused catheters. C.R. Bard's simple denial that it tests, however, is not

enough to overcome the possibility raised by this evidence that C.R. Bard does actually test the

_

5 Mr. Ring seeks to correct this staternent in his errata sheet. As noted previously,
however, Defendant agrees that the court may consider Mr. Ring’s uncorrected testimony for
purposes of this mation.

12

———L