Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc.
670 F.3d 1171
| Fed. Cir. | 2012Background
- The case concerns Bard’s patent on a ePTFE vascular graft with a defined internodal distance (6–80 microns) and related graft wall properties.
- Cooper conceived the invention; Goldfarb independently conceived and reduced to practice later; the Board awarded Goldfarb priority but Bard later prevailed on inurement issues.
- Interference proceedings (Cooper II) held Goldfarb’s work inures to Cooper’s benefit; Bard sued Gore for infringement of the ’135 patent.
- The district court awarded Bard enhanced damages, attorneys’ fees, and an ongoing royalty after finding willful infringement and no invalidity on inventorship, anticipation, or written description.
- This court affirmed, holding substantial evidence supported the jury on noninventorship, no anticipation, no obviousness, valid written description, willful infringement, and the royalty/fees awards.
- A dissent (Newman, J.) criticized the decision, arguing Goldfarb cannot claim rights to Gore’s material and testing results.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Inventorship of the ’135 patent | Gore argues Cooper is a joint inventor | Bard argues Goldfarb alone conceived the invention | Not joint inventors; substantial evidence supports Bard |
| Anticipation by Matsumoto | Matsumoto does not enable or anticipate | Matsumoto anticipates the claims | Not anticipated; Matsumoto not enabling; no clear and convincing anticipation |
| Obviousness over Volder and Matsumoto | Invention nonobvious in view of Volder/Matsumoto | Claims obvious in light of Volder and Matsumoto | Not obvious; Volder alone and in combination with Matsumoto do not render claims obvious |
| Written description | Written description supports claims 20–24, 27 | Wall thickness 0.2–0.8 mm required | Written description sufficient; wall thickness not essential to invention |
| Willful infringement and remedies | Infringement willful; warranted enhanced damages and ongoing royalty | No willful infringement; defenses mischaracterized | Willful infringement; enhanced damages, fees, and ongoing royalty upheld |
Key Cases Cited
- Cooper v. Goldfarb, 154 F.3d 1321 (Fed. Cir. 1998) (found Cooper conceived; inurement issues; nonjoint inventorship emphasized)
- Cooper v. Goldfarb, 240 F.3d 1378 (Fed. Cir. 2001) (Cooper conceived; Goldfarb’s work inures to Cooper’s benefit; later analysis of collaboration)
- Microsoft Corp. v. i4i Ltd. P'ship, 131 S. Ct. 2238 (2011) (clear and convincing standard for invalidity)
- Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (written description standard en banc)
- Seagate Tech., LLC v. Harris Corp., 497 F.3d 1360 (Fed. Cir. 2007) (willfulness and objective considerations for infringement)