670 F.3d 1171 (Fed. Cir. 2012), 2010-1510, Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc.

Docket Nº:2010-1510.
Citation:670 F.3d 1171, 101 U.S.P.Q.2d 1641
Opinion Judge:GAJARSA, Circuit Judge.
Party Name:BARD PERIPHERAL VASCULAR, INC. and David Goldfarb, M.D., Plaintiffs/Counterclaim, Defendants-Appellees, v. W.L. GORE & ASSOCIATES, INC., Defendant/Counterclaimant-Appellant. and C.R. Bard, Inc., Counterclaim Defendant-Appellee,
Attorney:Steven C. Cherny, Kirkland & Ellis, LLP, of New York, NY, argued for the plaintiffs/counterclaim defendants-appellees and counterclaim defendant-appellee. With him on the brief were John C. O'Quinn, Nathan S. Mammen and William H. Burgess, of Washington, DC. Of counsel on the brief were Gregory G...
Judge Panel:Before NEWMAN, GAJARSA,[*] and LINN, Circuit Judges. Dissenting opinion filed by Circuit Judge NEWMAN. NEWMAN, Circuit Judge, dissenting.
Case Date:February 10, 2012
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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670 F.3d 1171 (Fed. Cir. 2012)

101 U.S.P.Q.2d 1641

BARD PERIPHERAL VASCULAR, INC. and David Goldfarb, M.D., Plaintiffs/Counterclaim, Defendants-Appellees,

and

C.R. Bard, Inc., Counterclaim Defendant-Appellee,

v.

W.L. GORE & ASSOCIATES, INC., Defendant/Counterclaimant-Appellant.

No. 2010-1510.

United States Court of Appeals, Federal Circuit.

February 10, 2012

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[Copyrighted Material Omitted]

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[Copyrighted Material Omitted]

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Steven C. Cherny, Kirkland & Ellis, LLP, of New York, NY, argued for the plaintiffs/counterclaim defendants-appellees and counterclaim defendant-appellee. With him on the brief were John C. O'Quinn, Nathan S. Mammen and William H. Burgess, of Washington, DC. Of counsel on the brief were Gregory G. Garre and Maximilian A. Grant, Latham & Watkins LLP, of Washington, DC; Andrew M. Federhar, Fennemore Craig P.C., of Phoenix, of AZ; and John L. Strand, Wolf, Greenfield & Sacks, P.C., of Boston, MA. Of counsel was Amanda Hollis, Kirkland & Ellis LLP, of Chicago, IL.

Richard G. Taranto, Farr & Taranto, of Washington, DC, argued for the defendant/counterclaimant-appellant. Of counsel on the brief were David H. Pfeffer,

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Harry C. Marcus, James W. Gould, Steven M. Purdy and Joseph A. Farco, Locke, Lord, Bissell & Liddell, LLP, of New York, NY; Matthew K. Blackburn, of San Francisco, CA; and William J. Maledon, Osborn Maledon, P.A., of Phoenix, AZ; John S. Campbell, W.L. Gore & Associates, Inc., of Newark, DE.

Before NEWMAN, GAJARSA,[*] and LINN, Circuit Judges.

Dissenting opinion filed by Circuit Judge NEWMAN.

OPINION

GAJARSA, Circuit Judge.

This has been a long and arduous journey for the parties in this litigation, but this should be the final curtain of the saga, which commenced in 1974 with the filing of the patent application that eventually matured as U.S. Patent No. 6,436,135 (" '135 patent" ). In this patent infringement action, W.L. Gore & Associates, Inc. (" Gore" ) appeals the United States District Court for the District of Arizona's judgment, after a jury verdict, that (1) found the '135 patent willfully infringed and not invalid for improper inventorship, anticipation, obviousness, or lack of written description, and (2) awarded enhanced damages, attorneys' fees and costs, and an ongoing royalty in favor of Bard Peripheral Vascular, Inc. and David Goldfarb (collectively, " Bard" ). Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc. (" Final Judgment " ), No. 03-CV-0597 (D.Ariz. Aug. 24, 2010), ECF No. 1047. 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

BACKGROUND

A.

The technology in this case involves prosthetic vascular grafts that are fabricated from highly-expanded polytetrafluoroethylene (" ePTFE" ). '135 patent col.1 ll.3-5. The grafts are used to bypass or replace blood vessels to assure adequate and balanced blood flow to particular parts of the body. Id. col.1 ll.6-7.

In the early 1970s, when the invention was made, ePTFE was produced as tubes that had a structure consisting of solid nodes of PTFE connected by thin PTFE fibrils. The distance between the nodes is referred to as the fibril length [or the internodal distance]. This distance is important to the suitability of the ePTFE material for use as a vascular graft.

Cooper v. Goldfarb (" Cooper II " ), 240 F.3d 1378, 1381 (Fed.Cir.2001); see also Cooper v. Goldfarb (" Cooper I " ), 154 F.3d 1321, 1324 (Fed.Cir.1998). Gore sells ePTFE under the brand name " Gore-Tex." Cooper I, 154 F.3d at 1324.

The '135 patent, entitled " Prosthetic Vascular Graft," was filed on October 24, 1974 and issued nearly twenty-eight years

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later on August 20, 2002. '135 patent at [54], [22], [45]. The '135 patent discloses a graft " formed from a small bore tube of polytetrafluoroethylene which has been heated, expanded and sintered so as to have a microscopic superstructure of uniformly distributed nodes interconnected by fibrils...." Id. col.3 ll.41-44. A major objective of the claimed invention is providing " a homogeneously porous vascular prosthesis" with " small nodes interconnected by extremely fine fibrils to form an open superstructure which will allow uniform, controlled transmural cellular ingrowth and thereby assure the establishment and maintenance of a thin, viable neointima as well as firm structural integration of the graft into the body." Id. col.3 ll.27-34.

Bard asserts that Gore infringes claims 20 to 27 of the '135 patent, of which independent claim 20 is representative:

20. An artificial vascular prosthesis comprising expanded, porous, polytetrafluorocthylene [sic] having a microstructure consisting of nodes interconnected by fibrils which permits tissue in-growth, wherein an average distance between nodes is not less than about 6 microns and is small enough to prevent transmural [sic] blood flow.

Id. col.12 ll.1-6 (emphases added). Claims 21 to 24, which depend from claim 20, claim an upper limit on the average distance between the nodes from about 80 to about 200 microns. Id. col.12 ll.7-18. Independent claims 25 to 27 claim that the average distance between the nodes is about 6 to about 80 microns. Claims 25 and 26 also specify " a wall thickness greater than about 0.2 millimeters and less than about 0.8 millimeters." Id. col.12 ll.21-22, 28-29. Claim 26 further adds the limitation of " an average density in the range of between about 0.2 and 0.5 grams per millimeter." Id. col.12 ll.30-31.

The prior art at issue in this appeal includes two articles, one by Dr. Jay Volder and one by Dr. Hiroshi Matsumoto. See Jay G.R. Volder et al., A-V Shunts Created in New Ways, Transactions, American Society for Artificial Internal Organs, vol. XIX, Apr. 8-9, 1973, at 38-42 (" Volder" ); H. Matsumoto et al., A New Vascular Prosthesis for a Small Caliber Artery, Surgery, vol. 74, no. 4, Oct. 1973, at 519-23 (" Matsumoto" ). Both publications were considered by the examiner at the United States Patent and Trademark Office (" PTO" ) during the prosecution of the '135 patent and are listed on the first page of the patent-in-suit. '135 patent at [56].

The factual history of this case has been discussed in a previous decision of this court:

[Peter] Cooper was the Plant Manager of [Gore's] Flagstaff, Arizona facility, and primarily was involved in making ePTFE tubes. Cooper provided the tubes to various researchers, who evaluated their suitability for vascular grafts. During the course of his work, Cooper discovered that material from ePTFE tubes with fibril lengths ... [of about 5 to 100 microns] was suitable for use in vascular grafts.

...

During the same period, Goldfarb was Director of Research and Clinical Staff Surgeon at the Arizona Heart Institute [ (" AHI" ) ], and was conducting research on artificial vascular grafts. Between February and April of 1973, Cooper sent Goldfarb a number of ePTFE tubes to use in his research. Although Cooper intended that Goldfarb use the tubes for vascular grafts, Cooper did not have any right of control over Goldfarb's research, and Goldfarb was not required to use the tubes supplied by Cooper or to perform

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his experiments in any particular way.

Goldfarb conducted a series of experiments involving 21 grafts made from the tubes Cooper provided. On June 13, 1973, the graft labeled " 2-73 RF," which came from Lot 459-04133-9 provided by Cooper, was determined to be a successful implant in a dog.

Cooper II, 240 F.3d at 1381.

B.

The '135 patent was previously the subject of an interference proceeding between Cooper and Goldfarb at the Board of Patent Appeals and Interferences (" Board" ), Interference No. 101,100 (" Interference" ). On April 2, 1974, Cooper filed Patent Application No. 05/457,711 claiming the use of ePTFE as a vascular graft. Cooper I, 154 F.3d at 1325. On October 24, 1974, Goldfarb filed Patent Application No. 05/517,415 also claiming the use of ePTFE as a vascular graft. Id. at 1326. On September 19, 1983, the PTO declared an interference between the two patent applications with Cooper as the senior party and Goldfarb as the junior party. Id. The only count, which is " the Board's description of the interfering subject matter that sets the scope of admissible proofs on priority," 37 C.F.R. § 41.201, from the Interference relevant to this case states:

An artificial vascular prosthesis comprising expanded, porous, polytetraflouroethylene [sic] having a microstructure consisting of nodes interconnected by fibrils which permits tissue ingrowth, wherein said fibrils are above about 5 microns up to 100 microns in length.

Cooper I, 154 F.3d at 1326. The Board awarded priority of invention to Goldfarb because Goldfarb established that he had reduced the invention to practice before Cooper. Id. at 1326-27.

This court affirmed " the Board's determination that Goldfarb had conceived the invention and reduced it to practice by July of 1973." Id. at 1331. This court also, however, determined that the Board erred " by failing to consider whether Goldfarb's efforts inure to the benefit of Cooper," and remanded the case for the Board to consider that issue. Id. at 1333.

On appeal for the second time, this court explained that Cooper conceived the invention, but only after sending to Goldfarb the tubes which Goldfarb used to conceive the invention and reduce it to practice. Cooper II, 240 F.3d at 1381. Cooper could not have known that the tubes sent...

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