Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc.
776 F.3d 837
Fed. Cir.2015Background
- The '135 patent claims vascular grafts made from expanded PTFE (ePTFE) with specific internodal/fibril length limitations that enable uniform tissue in-growth.
- Goldfarb filed the original application in 1974; after an interference with Gore employee Peter Cooper (Cooper I/II), the PTO awarded priority to Goldfarb and the '135 patent issued decades later.
- In 2003 Goldfarb and exclusive licensee Bard Peripheral Vascular (BPV) sued Gore for infringement; a jury found infringement and willfulness and awarded substantial damages.
- The Federal Circuit panel affirmed but the court granted en banc rehearing limited to willfulness, holding the objective-recklessness threshold is a legal question for the judge and remanding for reconsideration (Bard II/Bard en banc).
- On remand the district court again found Gore’s defenses not objectively reasonable and maintained the willfulness finding; Gore appealed, renewing challenges to standing and to the objective reasonableness of its inventorship/joint-inventorship defense.
- The Federal Circuit ( Prost, C.J.) affirmed: plaintiffs had standing as exclusive licensee(s), and Gore’s inventorship defense was not objectively reasonable given the extensive prior proceedings (Cooper I/II) and record.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Standing to sue | Goldfarb/BPV were proper plaintiffs; BPV was Goldfarb’s exclusive licensee and could sue | Gore: Goldfarb had virtually assigned all substantial rights to Bard Inc. in 1980, and BPV’s later transfer lacked a written instrument so plaintiffs lacked standing | Affirmed plaintiffs had standing; BPV was an exclusive licensee with a written 1997 transfer memorializing rights and Goldfarb retained significant rights in 1980 agreement |
| Standard of review for willfulness | Willfulness requires objective-recklessness; judge decides threshold as a legal question (per en banc) | Gore argued its defenses were reasonable and that deference should apply | Court applied de novo review of objective-recklessness and affirmed that Gore’s defenses were not objectively reasonable |
| Inventorship / joint inventorship defense | Gore: Cooper (Gore employee) was a joint inventor; Goldfarb’s patent invalid for nonjoinder | Bard/Goldfarb: issued patent presumes correct inventorship; prior interference and record show Goldfarb conceived/reduced to practice the claim limitations and Cooper did not communicate fibril-length conception to Goldfarb | Court held Gore’s inventorship defense was not objectively reasonable given prior interference findings and record; failing to raise new evidence, Gore’s position could not meet Seagate threshold |
| Enhanced damages / willfulness consequences | Gore: even if infringement found, willfulness/enhanced damages unjustified given substantial reasonable defenses and equities (public health) | Plaintiffs: willfulness supports enhancement after objective-recklessness threshold met | Court affirmed willfulness determination; concurrence urged revisit of standards post‑Supreme Court fee/standards decisions; dissent argued de novo review was not properly applied and enhancement inappropriate |
Key Cases Cited
- Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 670 F.3d 1171 (Fed. Cir. 2012) (panel opinion addressing infringement and related appeals)
- Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 682 F.3d 1003 (Fed. Cir. 2012) (panel opinion revising analysis of willfulness; remand for judge to decide objective-recklessness)
- Cooper v. Goldfarb, 154 F.3d 1321 (Fed. Cir. 1998) (interference decision addressing conception and priority)
- Cooper v. Goldfarb, 240 F.3d 1378 (Fed. Cir. 2001) (follow-up on interference, conception, and inurement issues)
- In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc) (establishing two-part test for willful infringement: objective-recklessness then subjective knowledge)
- Lujan v. Defenders of Wildlife, 504 U.S. 555 (1992) (standing burden for party invoking federal jurisdiction)
- Waymark Corp. v. Porta Sys. Corp., 334 F.3d 1358 (Fed. Cir. 2003) (assignments must be in writing but licenses may be oral)
- Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305 (Fed. Cir. 2010) (objective prong of willfulness not met where accused raises substantial question of invalidity)