Docket No. 2010-1050
NEWMAN(d), GAJARSA, LINN
February 10, 2012
Brief summary: Bard won enhanced damages and attorney’s fees in case stretching back to the 1970s. A key issue was inventorship, which the FC affirmed was achieved by Bard even though Gore provided the material and the general idea to use it in vascular grafts.
Summary: Interestingly, this case reaches all the way back to 1974 with the filing of a patent application that eventually issued as US 6,436,135 (issued Aug. 20, 2002) relating to prosthetic vascular grafts (e.g., replacement blood vessels; “nodes inter-connected by fibrils…an average distance between nodes is not less than about 6 microns and is small enough to prevent transmural [sic] blood flow”). The ‘135 patent was the subject of a previous interference between an employee of Gore (“Cooper”) and Dr. Golfarb (“Bard”) (who originally received samples of the material for the grafts from Cooper in 1973). The Board awarded priority to Goldfarb because he first to reduce the claimed invention to practice. That decision was appealed twice, and both times the FC found in favor of Bard. Bard filed suit against Gore in 2003 and, in 2007, a jury found the ‘135 patent to be willfully infringed and not invalid, and the DC awarded Bard enhanced damages ($371 million), attorney’s fees and costs ($19 million), and on ongoing 12.5-20% royalty. Regarding inventorship, the FC concluded that the “lack of communication and utter lack of understanding of what would make a successful graft is substantial evidence in support of the jury’s verdict implicitly finding that Cooper’s contribution [to the claimed invention] was insignificant” (Pannu, FC 1998; Invitrogen, FC 2005 (Conception “requires that the inventor appreciate that which he has invented.”); Fina, FC 1997; Hess, FC 1997 (explaining “‘what the then state of the art was and supplying a product to them for use in their invention’ does not automatically make one a joint inventor”). The FC also agreed with jury that Bard’s claims were not anticipated (“Gore’s own fact witness, Dan Detton, who ‘stated that ‘you couldn’t figure anything’ from the Matsumoto article ‘because the article itself did not define anything’”, evidence that others were unable to replicate Matsumoto’s work; “Dr. Jock Wheeler, Gore’s own technical expert, testified that…internodal distance, which was ‘really not mentioned in th[e] article.'”) The FC also agreed that Bard’s claims were not obvious in view of two prior art documents that had already been repeatedly considered by the PTO (“Neither Volder nor Matsumoto disclosed the importance of the internodal distance.”) And the written description was found to be sufficient (specification: “the average internodal distance…must fall within a relatively narrow range of values, viz., between approximately 6 and 80 microns”; Ariad, FC 2010; Martek, FC 2009 (“[A] patent claim is not necessarily invalid for lack of written description just because it is broader than the specific examples disclosed.”) The FC further affirmed the finding of willful infringement, noting that “an infringer’s reliance on favorable advice of counsel . . . is not dispositive of the willfulness inquiry” (Seagate, FC 2007). Here, the FC agreed that “Bard presented substantial evidence that Gore’s opinion of counsel was not based on an objective perspective” (“same law firm representing Gore both before and after the ’135 patent was issued”, opinion “excluded certain available evidence that was relevant to Gore’s invalidity defenses”). The panel also concluded that “the district court did not abuse its discretion in awarding enhanced damages to Bard” (jury’s verdict of willfulness, the evidence supporting willfulness, and the extensive litigation history between the parties that Gore repeatedly lost yet continued to infringe”) and that the royalty determination was appropriate. Judge Newman’s dissent argued that the court erroneously held “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 then “assert the exclusive right to the use for which the material was provided.”