Cooper v. Goldfarb

• Decision Date: 02 March 2001
• Docket Number: No. 00-1046,00-1046
• Citation: 240 F.3d 1378
• Parties: (Fed. Cir. 2001) PETER B. COOPER, APPELLANT, V. DAVID GOLDFARB, APPELLEE
• Court: U.S. Court of Appeals — Federal Circuit

Page 1378

240 F.3d 1378 (Fed. Cir. 2001)

PETER B. COOPER, APPELLANT,

V.

DAVID GOLDFARB, APPELLEE.

No. 00-1046

U.S. Court of Appeals, Federal Circuit

March 02, 2001

Appealed from: Patent and Trademark Office,(Interference No. 101,100)

[Copyrighted Material Omitted]

Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, Dc, argued for appellant. With him on the brief were Albert J. Santorelli, Barbara C. McCurdy, and Howard A. Kwon.

D. Dennis Allegretti, Duane, Morris & Heckscher, of Boston, Massachusetts, argued for appellee. Of counsel on the brief were Lawrence M. Green, and Matthew B. Lowrie, Wolf, Greenfield & Sacks, P.C., of Boston, Massachusetts.

Before Clevenger, Rader, and Schall, Circuit Judges.

Schall, Circuit Judge.

This appeal involves a patent interference that is before us for the second time. Peter B. Cooper and David Goldfarb originally filed their patent applications in 1974. An interference was declared between the applications in 1983, and the Board issued a final decision in 1995, awarding priority to Goldfarb. The Board determined that, although Cooper was the first to conceive the invention at issue, which relates to the fibril length of certain material used for vascular grafts, Goldfarb was the first to reduce the invention to practice. Cooper v. Goldfarb, 154 F.3d 1321, 1326-27, 47 USPQ2d 1896, 1900 (Fed. Cir. 1998) ("Cooper I"). Because Cooper had not alleged that he had been diligent in reducing the invention to practice, Goldfarb's earlier reduction to practice entitled him to priority of invention. See 35 U.S.C. 102(g); Cooper I, 154 F.3d at 1326-27, 47 USPQ2d at 1900.

Cooper appealed the Board decision to this court. We affirmed the Board's determination that Goldfarb was the first to reduce the invention to practice. Id. at 1331, 47 USPQ2d at 1904. We remanded the interference to the Board, however, for consideration of whether Goldfarb's work in reducing the invention to practice might have inured to Cooper's benefit, therefore entitling Cooper to priority of invention. Id. at 1333, 47 USPQ2d at 1905-06. On remand, the Board determined that the relationship between Cooper and Goldfarb was such that Goldfarb's work did not inure to Cooper's benefit, and again awarded priority of invention to Goldfarb. Goldfarb v. Cooper, Pat. Int. No. 101,100 (Bd. Pat. App. & Int. June 17, 1999) (Paper No. 305) ("Cooper II"). Cooper appeals from this decision. Because we conclude that Cooper has not established that he contemporaneously appreciated that the material tested by Goldfarb met the fibril length limitation of the interference count, and has not established that Goldfarb's knowledge of the material's fibril lengths inured to his benefit, we affirm the Board's decision.

BACKGROUND

I.

The invention at issue relates to an artificial vascular prosthesis made from expanded polytetrafluoroethylene ("ePTFE"). ¹ The invention is useful as a vascular graft. 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. This distance is important to the suitability of the ePTFE material for use as a vascular graft.

The count defines the invention as follows:

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

Cooper I, 154 F.3d at 1326, 47 USPQ2d at 1900.

During the time period at issue, Cooper was the Plant Manager of W.L. Gore & Associate's ("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 within the scope of the interference count was suitable for use in vascular grafts. The Board found that Cooper had conceived the invention as of June 5, 1973. Id. at 1328, 47 USPQ2d at 1901.

During the same period, Goldfarb was Director of Research and Clinical Staff Surgeon at the Arizona Heart Institute, 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 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. Goldfarb testified before the Board that in July of 1973 he measured the fibril lengths of that graft, which were found to be within the scope of the interference count, and observed that there was tissue ingrowth into the graft. The Board determined that Goldfarb had conceived the invention "by at least July of 1973," and had reduced the invention to practice "by July of 1973." Id. at 1329, 47 USPQ2d at 1902. As noted, we affirmed that determination. Id. at 1331, 47 USPQ2d at 1904.

II.

When Cooper sent the Lot 459-04133-9 material to Goldfarb, he had not yet recognized the importance of the fibril length required by the interference count, i.e., he had not yet conceived the invention, and he was not aware of the fibril lengths of the material he was sending to Goldfarb. After Cooper conceived the invention, he did not communicate his conception to Goldfarb, and he did not ask Goldfarb to use material having fibril lengths within the range specified by the interference count, or to measure the fibril lengths of the material he had provided.

In view of these facts, the Board, on remand from this court, determined that Cooper was not entitled to benefit from Goldfarb's work in reducing the invention to practice. Cooper II, slip op. at 16. The Board first considered the relationship between Cooper and Goldfarb. The Board noted that the relationship was not like that in the typical inurement case, where the work of an employee, fellow employee, or agent inures to the benefit of the inventor. Id. at 9-12. The Board noted that Goldfarb was not an employee or fellow employee of Cooper, and that Cooper had no right to control Goldfarb's work. Id. The Board recognized that inurement was found in Burroughs Wellcome Co. v. Barr Laboratories, Inc., 40 F.3d 1223, 32 USPQ2d 1915 (Fed. Cir. 1994), in the absence of an employer-employee or principal-agent relationship. However, it distinguished that case on the ground that the inventors in Burroughs Wellcome had conceived their invention before they sent the material at issue to another party for testing, whereas Cooper had not conceived the invention when he sent the Lot 459-04133-9 material to Goldfarb. Cooper II, slip op. at 14.

The Board determined that Cooper had intended that Goldfarb use the material for vascular grafts, but that he "could not have been requesting that Goldfarb reduce the invention to practice because at that time Cooper did not know what the invention in issue was." Id. at 15. The Board commented on Cooper's failure to communicate his conception to Goldfarb, as well as his failure to ensure that Goldfarb used grafts with fibril lengths within the scope of the interference count. Id. The Board determined that Cooper did not know whether the material sent to Goldfarb fell within the scope of the count. Id. at 16. The Board concluded that, under these circumstances, Goldfarb's reduction to practice did not inure to Cooper's benefit. Id. Cooper appeals the Board's decision. We have jurisdiction pursuant to 35 U.S.C. 1295(a)(4)(A).

DISCUSSION

I.

When two patent applications are directed to the same invention, the Patent Office declares an "interference" between the applications to determine which applicant is entitled to priority of invention. See 35 U.S.C.A. 135 (West Supp. 2000). The precise scope of the interfering subject matter is defined by the interference "count." 37 C.F.R. 1.601(f) (2000). Priority is generally awarded to the applicant who was first to reduce the invention to practice; however, an applicant who was first to conceive the invention but last to reduce it to practice will be awarded priority if he demonstrates reasonable diligence in his reduction to practice. 35 U.S.C.A. 102(g) (West Supp. 2000). "Conception is the formation, in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice." Cooper I, 154 F.3d at 1327, 47 USPQ2d at 1901. To establish reduction to practice, the inventor must prove that he made an embodiment of the invention that met all of the limitations of the interference count and that he determined that the invention would work for its intended purpose. Id. When testing is necessary to establish that the invention will work for its intended purpose, the embodiment relied upon as evidence of reduction to practice must work for the intended purpose. Id. Moreover, "the inventor must contemporaneously appreciate that the embodiment worked and that it met all the limitations of the interference count." Id.

At the time we decided Cooper I, the Board had determined that Cooper was first to conceive the invention at issue, but that Goldfarb was first to reduce the invention to practice. Cooper I, 154 F.3d at 1326 47 USPQ2d at 1900. Because Cooper had not alleged any diligence in his reduction to practice, the Board awarded priority of invention to Goldfarb. Id. at 1326-27, 47 USPQ2d at 1900. As...