## Facts

- Dr. Sakharam D. Mahurkar invented a double-lumen hemodialysis catheter designed for percutaneous insertion and high flow with minimal cross-section and trauma.
- Mahurkar filed an initial application in 1983; after continuations, U.S. Patent No. 4,808,155 issued in 1989.
- In 1990, Mahurkar granted C.R. Bard a limited license for non-hemodialysis uses; Mahurkar alleged Bard exceeded the license by making and selling hemodialysis catheters within the patent’s claims.
- Bard’s accused product was the Hickman II catheter.
- Bard asserted invalidity by anticipation under 35 U.S.C. § 102(a), relying on a July 1983 Cook, Inc. catalog allegedly disclosing a double-lumen catheter.
- Mahurkar offered evidence of work beginning in 1979, including making and testing prototypes and efforts to obtain suitable medical-grade tubing, supported by corroborating testimony and documents.

## Issues

1. Whether the ’155 patent was anticipated under 35 U.S.C. § 102(a) by the July 1983 Cook catalog, or whether Mahurkar’s proven prior invention defeated that challenge.
2. Whether substantial evidence supported the jury’s findings that Bard’s Hickman II catheter infringed the ’155 patent literally and under the doctrine of equivalents.
3. Whether the district court abused its discretion in damages by adding a 9% enhancement to a reasonable royalty (a “Panduit kicker”) without meeting statutory requirements for enhanced damages.

## Decision

- Affirmed the district court’s resolution of anticipation, including JMOL for Mahurkar that the Cook catalog did not anticipate under § 102(a) in light of Mahurkar’s corroborated prior invention.
- Affirmed the jury’s findings of literal infringement and infringement under the doctrine of equivalents as supported by substantial evidence.
- Vacated the damages award and remanded because the district court improperly increased the reasonable royalty by adding a 9% “kicker” without a statutory basis and required findings.

## Legal Principles

- Anticipation under § 102(a) may be defeated where the patentee proves prior invention before the reference date, supported by corroboration evaluated under a “rule of reason” considering all pertinent evidence.
- JMOL on anticipation is proper where, viewing the record as a whole, no reasonable jury could find the asserted reference invalidating.
- A jury’s infringement verdict is sustained if supported by substantial evidence, including for literal infringement (all claim limitations present) and for the doctrine of equivalents (insubstantial differences).
- A reasonable royalty may not be increased through an extra-statutory percentage add-on; any damages enhancement must rest on statutory authority and adequate supporting findings.

## Conclusion

The Federal Circuit upheld the patent’s validity against an anticipation challenge and sustained the infringement verdict, but set aside the damages award because the district court improperly augmented the reasonable royalty with a 9% enhancement lacking statutory grounding, requiring recalculation on remand.


Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572 (Fed. Cir. 1996)