Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc.

Indeed, accepting § Mr. Schwalier’s inter- removed him from the list. But effectively § 1552 does not for pretation of would allow allow such ap- “automatic” compel pointments, Congress ap- “Congress to the President to not could officers of point permissibly senior the United States. altered the appointment pro- authority not have the to cess ... “Congress by providing does ap- automatic pointments.” Dysart, President his require ap- exercise 369 F.3d at 1313-14. Moreover, pointment authority such would power; be the President’s decision not to by Congress appoint akin exercise of to an Mr. simply Schwalier “is unreview- itself, power sum, able.” appointment prohib- which is Id. at as the Gener- Thus, ited.” al Dysart, Department Counsel for the of Defense determined, correctly § hold that 1552 does not allow for ap- Dysart controls Mr. case, pointment operation law when government of the Schwalier’s and the did appoint arbitrarily chosen not not act per- capriciously by President has or fol- lowing son to office. the General Counsel’s advice. B IV argues that Mr. Schwalier also the We have considered Mr. Schwalier’s re- Department maining arguments General for the unper- Counsel and find them arbitrarily capriciously government Defense acted suasive. Because the did not Secretary when it Air act arbitrarily capriciously “coerced” by declining rescinding records, Force into corrections correct Mr. Schwalier’s judgment Br. But Appellant’s records. 18-19. of the district court is affirmed. Air a subcomponent Force is of the De AFFIRMED

partment of Defense. U.S.C. 111(a)(8).

§ It “subject acts to the author No costs. direction,

ity, and control the Secretary Defense,” § 10 U.S.C. who has

prescribed General Counsel for will Department Defense resolve itself,

legal disagreements Depart within 3.01, §§ ment of Defense Directive 5145.01 VASCULAR, BARD PERIPHERAL 2001). (May Accordingly, 3.10 the Sec INC., M.D., and David retary of Defense and the General Counsel Plaintiffs-Appellees, Department of Defense did not they stepped violate the law when in to Bard, C.R. Counterclaim Air resolve the issue whether the Force Defendant-Appellee, legally could correct Mr. Schwalier’s rec ords. ASSOCIATES, INC., W.L. GORE

Additionally, government’s de Defendant-Appellant. cision to rescind the corrections of Mr. arbitrary Schwalier’s records itself 2014-1114. No. or capricious. Mr. Schwalier was slated United States Court of Appeals, promoted major general under 10 Federal Circuit. U.S.C. 624. The recommendations to 13, 2015. Jan.

correct Mr. Schwalier’s records were theory promoted based on the that he was

by operation of law before the President twenty- patent eventually

'135 issued— years technology pat eight later. ent claims that have been at issue are thoroughly previ discussed this court’s involving ous decisions underlying Periph application. See Assocs., v. eral Inc. W.L. &Gore (Fed.Cir.2012) (“Bard Inc., 670 I”); Cooper v. 240 F.3d 1378 McConnell, Ellis Kirkland & Michael W. (Fed.Cir.2001) II”); Cooper (“Cooper DC, LLP, argued plain- Washington, Goldfarb, counterclaim defendant- tiffs-appellees and I”). (“Cooper him on the brief were With appellee. O’Quinn, Burgess, H. Briefly, pros- C. William to patent John relates Hardy; and P. J. Abdelnour Liam grafts highly-ex- Dennis vascular made of thetic York, NY; (“ePT- and Cherny, of New polytetrafluoroethylene Steven C. panded Sacks, Wolf, FE”). Strand, L. Greenfield & John The ePTFE material is made of Boston, P.C., MA. by of PTFE solid nodes of connected thin by PTFE It is sold under fibrils. Gore Poradek, Faegre Dan- W. Baker James gen- name patent brand “Gore-Tex.” The LLP, MN, Minneapolis, argued of for iels erally graft by covers a vascular formed defendant-appellant. him on the With homogeneously po- ePFTE that is thus Grimsrud; Timothy E. B. were Jared brief that uniform rous —a structure allows cell CO; Prill, Denver, and B. of Briant Leslie a regrowth integration establish firm of Florey and Rei- and Michael E. Deanna body. graft into the The different P.C., chel, &Fish Richardson of Minne- patent grafts claims of the are directed to MN. apolis, varying made of ePTFE with internodal distances, are called fibril also PROST, Judge, Before Chief lengths. HUGHES, Judges. Circuit NEWMAN and Vascular, Peripheral In Bard Inc. by for court filed Opinion Chief (“BPV”) and Dr. David Goldfarb filed suit Concurring Judge opinion PROST. filed infringement against Gore Dissenting

by Judge Circuit HUGHES. A jury found the '135 valid Judge filed opinion Circuit NEWMAN. that, and, willfully infringed, 2010, the court December district denied PROST, Judge. Chief judgment motions for a matter of as Associates, (“Gore”) Inc. W.L. Gore & (“JMOL”) reversing verdict. law judgment the United appeals from the and, February 2012, panel appealed, District of States District Court I, affirmed. at 1193. Bard F.3d in the Arizona willfulness granted en banc court denied but review (“’135 6,436,135 pat- of U.S. Patent No. rehearing the limited of au purpose “for ent”). below, For the reasons stated thorizing panel portion to revise the affirm. addressing opinion its willfulness.” Bard Peripheral Inc. v. W.L. Gore & I (Fed.Cir. Assocs., Inc., Fed.Appx. 2012) (en banc). panel dispute began filing accordingly This with the opinion of its parts discussing from which vacated patent application agreement allowing damages enhanced with Bard Inc. involving willfulness attorneys’ Peripheral application fees. Bard Vas any patents that might is- Assocs., cular, Inc., Inc. v. W.L. Gore sue. Gore argues agreement, that (Fed.Cir.2012) (“Bard granted all rights substantial II”). It held that to the threshold as the patent thereby resulting in a virtual — willfulness, objective “the determination assignment Inc. In Bard Inc. Bard recklessness, though even determination IMPRA, acquired which later became questions predicated underlying mixed wholly subsidiary, BPV, owned and in Sep- fact, decided of law is best tember, Bard Inc. transferred its interest question as a of law to de judge in the agreement to BPV. Gore ar- novo review.” Id. at 1007. The gues because there no evidence of a trial may remanded “so that court written effecting instrument the transfer the correct to the apply standard BPV, of the interest to BPV did not in fact instance.” Id. of willfulness the first acquire sue for standing infringement. 1008.1 sum, plaintiffs Gore contends that both remand, lacked standing: because again he had

On that, virtually assigned rights view of Bard it was found BPV, Court, because Bard Inc. just prop- “clear to this as it was to the had not Defendant, erly rights. transferred jury, ‘reasonable liti- ‘realistically expected’ could not gant,’ have argument Gore standing raised this on Peripheral to succeed.” Bard its defenses twice before at prior the district to court — Assocs., Inc. v. W.L. Gore & appeal its first in this case. Gore first Inc., 03-0597, 5670909, No. 2013 WL at pre-trial standing, filed a motion JMOL (D.Ariz. 2013) (order 17, denying *12 Oct. which the district court denied. Gore (“Bard infringement) on willful JMOL again post-trial raised the issue as a III”). Gore appeals. jurisdic- have We motion, JMOL which the district court 1295(a)(1). § tion under 28 U.S.C. again district denied. The court’s discus- standing sion of the issue and denial

II in motion was contained the same suit, argues Gore that at the time of 31, opinion March 2009 and order denying standing neither BPV nor had Gore’s various other JMOL that motions for the sue appealed Gore to this court. In that ap- thus seeks to Gore vacate peal, although the issue was not raised judgment entirety its and to briefing, panel the confirmed that the dis- the juris- have case lack of dismissed jurisdiction trict court had under 28 U.S.C. argument The crux diction. of Gore’s is 1338(a). I, § F.3d at 670 filed, at the time only that the suit (“Bard Inc.”) Bard, Inc. C.R. could have Gore that does not claim there exists standing reject possessed to sue. We that any material difference between the argu- argument. ment raised before the district court 1980, then appeal. was the inven- and that it now raises on this Goldfarb—who Indeed, original assignee pat- appeal, tor and its first Gore conceded application jurisdiction. ent’s into a license that the had district court —entered sought question Assocs., Bard, appeal 1. Gore the of inven- W.L. Gore & Inc. v. C.R. -U.S. -, 932, torship Supreme under 35 116 to the U.S.C. 133 S.Ct. 184 L.Ed.2d 752 Court, (2013). petition which denied certiorari. I, 2013) (order 1, supplemental requesting at Bard Appellant Brief for (No. 10-1542), appellant’s on the issue of stand- briefing bound, Instead, ing) are there- contends that ECF No. We WL 4858331. fore, prior prior panel’s the determination panel’s are bound the not standing that and that standing, plaintiffs based on the had determination jurisdiction. court had See district principle “[t]he fundamental States, 925, Gould, not to waiver” be- Inc. United standing (Fed.Cir.1995) (“The law of the case is cause federal courts are under an “[t]he doctrine, the judicially purposes their created independent obligation to examine prevent jurisdiction.” relitigation v. of which are own See United States 2431, decided to en- Hays, 115 S.Ct. issues that been 515 U.S. (1995). sure that trial courts follow decisions L.Ed.2d courts.”). appellate juris “party invoking federal sure, exceptional are To there establishing” the burden of diction bears panel may not circumstances any litigation. standing stage prior appeal in a adhere to decision Wildlife, Lujan 504 U.S. v. Defenders of “(1) case, in a same when evidence 561, 112 S.Ct. L.Ed.2d 351 different; substantially subsequent trial is (1992). case, challenged In this (2) controlling authority has made a since plaintiffs’ standing at the district court. contrary decision the law applicable court district determined issues; ruling the earlier plaintiffs their and had met burden estab work a mani clearly erroneous and would standing. appeal, lished On this court fest Id. not injustice.” This is such a case. again plaintiffs had confirmed appeal no new facts in this Gore raises argues standing. Gore that because it did only standing relitigate seeks same appeal, issue on brief the rejected be theory that district standing, not discuss the issue of did any in point change fore. does not to yet to be standing issue has resolved law. is also a case in relevant This finality. with findings which the district court made on however, matter, As an initial we have prior appel remand that “undermine” prior panel no assume that the reason to standing. late affirmance of Pub. Interest This a weigh standing. did not was not N.J., v. Grp. Magnesium Research Inc. a issue standing case in which remained (3d Elektron, Inc., 111, 123 F.3d Cir. record, in the deep dormant in facts buried 1997). And, we no clear error in the see by recognized or which was not either standing previous decision on that would trial party or the court. While Gore’s extraordinary at this warrant an review appeal briefs in that did not raise the stage. issue, the standing opinion district Indeed, merits, challenge is an discussing standing Gore’s were on the this easy de opening required question. attached to the brief We review novo 28(a)(12). Rule pursuant party’s to Federal Circuit district court’s determination reviewing any Had merit while factual find standing, seen Gore’s it to challenge, ings for relevant that determination for standing could asked v. briefing, Corp. additional as this court has done clear error. SanDisk STMicroe (Fed. See, lectronics, 1372, e.g., in other cases. Consumer 480 F.3d Cir.2007). argument hinges v. Wis. Alumni on Watchdog Research (Fed.Cir. Found., 14, of a instrument transfer- No. 13-1377 Nov. absence written was the BPV what it contends Bard Inc.’s transfer ring rights to of its to to Bard assignment from Goldfarb agreement virtual BPV under the failed because it Inc., 211 Speedplay, Bebop, Inc. Inc. v. See writing. was not We see no error in the (Fed.Cir.2000) 1245, (holding F.3d district court’s analysis well-reasoned written needed to that a instrument was alia, point the first re —inter proprietary document “transfer of significant tained reversionary rights, support pat to for standing to sue rights” restriction, there field of was a use infringement); (“Ap § 261 ent 35 U.S.C. right Goldfarb retained the to share patent, any inter plications patents, or damages. id. at See 15. There no therein, assignable shall be law est basis, therefore, to conclude that Goldfarb (emphases in writing.”) an instrument “all had transferred substantial rights” added). However, BPV has never claimed Corp., Bard. See Abbott Labs. v. Diamedix rights in 2003 it had all substantial (Fed.Cir.1995) 47 F.3d (finding patent.2 only position BPV’s rights that even limited retained that it was an exclusive with the licensee it a patentee necessary any made party in infringement. sue for It is well right to suit). subsequent even But grant established of a license does get shoals, if past Gore could those first Waymark in writing. not need to be See argues would founder the second. Gore Sys. Porta Corp. Corp., v. represents that since Bard that it trans assignments (“Only ferred its entire interest in agree the 1980 in writing need be under 35 U.S.C. BPV, if ment to that interest were a virtu oral.”); may Corp. Licenses Rite-Hite al then assignment, the transfer fail would (Fed.Cir. Co., Kelley But, without agreement. a written there (en 1995) banc) to be an (holding that is no that in there awas rely party may exclusive licensee a written agreement parties between the af an express implied either promise firming Bard’s transfer of rights event, exclusivity). any in 1997 there argues pre BPV. Gore that our case law memorialized the exclu was a transfer of vents such retroactive agreement from Inc. sive license Goldfarb and Bard —but support proposition, this all Gore predecessor. with the agree BPVs We precedent court that cites is which we considered agreement district this 1997 be parties right agreements tween settles were executed BPVs after filed, the time complaint Mars, sue at as Gold- suit such as Coin Inc. v. III, Inc., farb’s exclusive licensee. at 19- (Fed.Cir. Bard Acceptors, 527 F.3d 1359 2008). Here, contrast, by the 1997 memori- 20. years suit alization occurred before the readily BPV Goldfarb thus meet agreement was filed. The 1997 was not standing. their burden establish For pro agreement nunc tunc written that oc prevail, it Gore to would have to establish complaint. e.g., curred Compare, the following propositions: each of after Bioscience, LLC, Inc. v. Abraxis Navinta as an agreement styled 1980 that was “ex- (Fed.Cir.2010); 1359, 625 1366-67 license” F.3d clusive between Goldfarb and Son, A.G., assignment, Bard Inc. was fact a virtual Enzo APA Inc. v. 134 Geapag 2007, remaining posi- assigned Goldfarb his most this transfer corroborates BPV’s patent in the parties interests to BPV. clearly that tion that the understood argues assignment illusory that this was since BPV licensee at the time the was Goldfarb’s already granted had all substantial suit was filed. rights to Bard Inc. in 1980. We note 844 (Fed.Cir.1998). judge Accord- as this case—“the remains

F.3d final had at the arbiter of whether the defense plaintiffs standing ingly, the Id. at 1008 add- (emphasis reasonable.” complaint, time of ed). 1338(a). jurisdiction pursuant § had turn, then, appeal to Gore’s on We II, Accordingly, under Bard merits. deter review de novo district court’s is sus “position mination whether Gore’s

Ill of no ceptible to a reasonable conclusion infringement, To establish willful USA, infringement.” Uniloc Inc. v. Mi showing has the burden patentee (Fed. Corp., 632 F.3d crosoft convincing evidence that “by clear Cir.2011). Objective will not recklessness objectively high an infringer despite acted has infringer be found where the accused in actions constituted likelihood that question” raised as to the a “substantial Seagate patent.” of a valid In re fringement validity noninfringement (Fed. ch., LLC, F.3d Te Solutions, Spine Inc. Medtronic Sofa Cir.2007) (en banc) cert denied 552 U.S. Inc., USA, 1305, 1319 mor Danek F.3d 1445, 170 128 S.Ct. L.Ed.2d (Fed.Cir.2010); DePuy Spine, Inc. v. Med (2008). “The of mind the accused state Danek, tronic Sofamor this infringer objective is not relevant to (Fed.Cir.2009). 1314, 1336 Only patentee Id. if the estab inquiry.” remand, objective On this standard” the district court evaluated lishes “threshold by raised inquiry then move to whether several defenses Gore and deter- does (determined objectively mined of them objectively-defined “this risk that none were developed infringe appeal, only in the appeals the record reasonable. On either or so its determination with to Gore’s proceeding) respect ment known inventorship have been known to defense. defense arises obvious it should This decades-long record, from in- infringer.” the accused Id. While this sec may parallel be an cludes examination prong Seagate ond issue of Gore’s fact, objec applications determination of Goldfarb’s on vascular threshold ePTFE, “objective grafts requires tive as made of an interference recklessness infringer’s applications, sessment” the accused de declared 1983 between the II, F.3d at In which I fenses. Bard we reviewed objective II as proceedings Bard we held that reckless well as the ness, in this though “predicated underly finally even case that were resolved— fact, ing questions except mixed of law and as to the issue of is best willfulness—in argument judge decided of law I. Gore’s is based on employee, sup- to de Id. fact Cooper, novo review.” at 1007.3 that its Peter underlying plied tubing factual ePTFE particular Even when issues were making to the in the first successful jury sent instance —such Goldfarb used opinion suggests position that it ness its defense. over- district court’s Gore’s rejected argument significance because states Gore’s “substan- the district Rather, contrary finding to a tial evidence’’ was that reference to "substantial evidence.” correctly expectation a Gore had reasonable of suc- district court followed Bard III, reviewing produced its Bard at the facts in the cess in defense. 11. Gore record whether, suggests argues litigation evaluating that that on the this facts, a rea- inappropriately findings relied on basis of those Gore had raised determining objective id. at fact in sonable defense. See reasonable-

845 (the contribution, (3) graft). “2-73 RF” In amount of or graft vascular each did view, not make a subject Gore’s furnished contribution to the matter of every patent. “the embodiment of the invention before claim of the using the invention Goldfarb conceived 116(a). 35 U.S.C. conception “Because III, that embodiment.” at 7. is the inventorship, touchstone of each joint generally inventor must contribute to matter, reject As an initial we the conception Ethicon, invention.” argument the mere fact a Corp., Inc. v. Surgical 1456, U.S. 135 F.3d member of previous dissented (Fed.Cir.1998). Conception pre is position its this issue indicates that cisely existing defined as “when a definite not point any reasonable. Gore does permanent operative an idea of inven previous case in we followed this tion, including every feature of the principle. contrary, Paper To the Con matter sought patented, to be is known.” verting v. Magna-Graphics Machine Co. Walters, (Fed. 411, Sewall v. 21 F.3d 1013, (Fed.Cir.1986), Corp., 785 F.2d Cir.1994). words, conception other is example, despite we noted only complete when the “idea is so clearly dissenting opinion prior existence of a in a defined in the inventor’s mind that only opinion infringement, affirming same ordinary skill necessary would be to re panel could still affirm willfulness in a duce the practice, invention to without ex Otherwise, appeal. later we would be im tensive research experimentation.” or Bur posing any single judge’s a rule that dis Labs., roughs Inc., v. Barr Wellcome Co. preclude sent on the merits could the de 1223, 1228(Fed.Cir.1994). 40 F.3d infringement. termination of willful required As to the degree of merits, Turning to the Gore claimed that contribution to conception, recog employee, Cooper, joint its a Peter nized that “[t]he determination of whether Therefore, inventor of the '135 a person joint is a specific, inventor is fact argued that the invalid for bright-line and no standard will suffice in non-joinder as a co-inventor. every case.” Fina & Chem. Oil Co. v. argues though Gore now that even it did Ewen, (Fed.Cir.1997). 1466, 1473 123 F.3d prevail, argument was still reason- underlying from our principle case law light able in in the of the facts record and joint is that a inventor’s contribution must joint inventorship. the law of quality, be “not insignificant in when that patents presumed Issued are against contribution is measured the di inventors; therefore, to correctly name the mension of the full par invention.” Id. Of showing misjoinder or “[t]he burden case, ticular relevance to this we have held nonjoinder heavy is a inventors one and that if supplies component an individual proved must convincing clear invention, essential to an that is an insuffi evidence.” Hess v. Advanced Cardiovas ciently significant if contribution the com (Fed. Sys., cular and the of its ponent principles use were Cir.1997) (quoting Corp. v. Garrett United Hess, known in art. 106 F.3d at States, Ct.Cl. F.2d 874 981; see also Pannu v. Iolab Corp., (1970)). statute, By (explaining may patent joint- joint for a apply required

[i]nventors inventor is to “do (1) ly they though physical- merely even did not more than explain the real in ly time, together concepts work or the same ventors well-known and/or art”). type Moreover, each did not current make same state of the pore need not and others in the art believed that “physically” joint while inventors statutory “the together key parameter under size was the success. work surplusage.” not mere find- ‘jointly’ is Id. at 1324. affirmed the Board’s word We Corp. Procter & Gam Kimberly-Clark providing that the lot ing Cooper’s to Co., 973 F.2d to ultimately ble Distrib. of ePTFE that led tubes (Fed.Cir.1992). require “inven that yet We graft, RF had not successful 2-73 “he line of communication open have some tors fibril recognized importance of the proximity to their temporal i.e., during interference, or length required by the he Lilly Ara Eli & Co. v. efforts.” invention, inventive yet had not conceived he (Fed.Cir. F.3d digm Corp., 376 lengths was not aware of the fibril 2004). inventor must con Critically, “each sending material he was to Goldfarb.” arrival at a definite joint to II, tribute Cooper Cooper 240 F.3d at 1381. What of the invention as idea permanent was, more generally, told that Burroughs, 40 practice.” be used in will expected material suitable “he to be as added); see also (emphasis at 1229 F.3d In graft.” a vascular Id. at 1384. other 601 F.3d Corp., v. ICOS Univ. Vanderbilt words, fi- Cooper “had not conceived (Fed.Cir.2010) (“[C]o-inventors 1297, 1308 length limitation he sent the bril before work to col together must collaborate material to Id. Goldfarb.” at 1385. permanent lectively a definite and sure, prior appeals in those To we invention.”). complete idea of held that “had Cooper conceived sum, objectively questions for the two invention, including length the fibril limita- (1) what con- assessing defense are tion” before Goldfarb evaluated the 2-73 permanent idea” the “definite stitutes graft RF and reduced the invention to issue and whether at of the invention I, practice. (citing Cooper at 1384-85 Id. to acted in concert Cooper and Goldfarb 1326). However, agree 154 F.3d at we respect to that idea. With jointly arrive at with district court that the record— factual and in- record questions, these to the liti- proceedings prior established raised in from the record were ferences Cooper that gation had “minimal —shows proceeding preceded the interference contact” with Goldfarb patent this the issuance of length the fibril limitation: reviewed this court litigation were —and Indeed, that, Cooper admits even after II. Cooper Cooper I and importance he conceived the of fibril first, length, that the he informa- convey As note did not to merely at was not the use tion to Goldfarb. He also admits that he invention issue Rather, grafts. grafts not to with in vascular did ask Goldfarb use of ePTFE includes, lengths required by of the '135 fibril the interfer- claim each limitation, count, ence to the fibril key specified dimensions determine lengths grafts. are essential for a suc Coo- length that successful While fibril at Cooper per required 240 F.3d graft. See communicate his cessful I, (noting conception Cooper the invention “relates 1332, U.S.P.Q.2d at certain material used length fibril any re- convey While iden failure information or grafts”). for vascular promising quests regarding length prevents material for fibril tified ePTFE as many grafts that were Goldfarb’s determination of the fibril grafts, vascular I, muring lengths failed. of the material from made of ePTFE invention, Cooper his benefit. at 1325. Prior to

847 issue, III, Cooper Gore to (quoting Bard at 9 this needed raise new evi- 1385). the record at Based on established dence or theories that were not considered I II —that we Cooper in reviewed— However, I II. Cooper prior as the Cooper independently con- Goldfarb noted, argument “Gore’s remains un- length of the fibril limitation. ceived changed and there is no still evidence that II Cooper I and concerned inure- While Cooper either recognized appreciated interference, they ment the context the critical nature of the internodal dis- barring Gore’s introduc- established that — key tance and communicated that require- Cooper of new evidence or tion theories — ment to Goldfarb before Goldfarb reduced collaborate, and Goldfarb did not commu- I, practice.” to invention nicate, way at any jointly nor in arrive 1182.4 F.3d at Within backdrop recognition length signifi- that fibril proceedings extensive to prior litiga- this graft Cooper cant for success. Even if therefore, tion, with agree conception prior achieved had court position that Gore’s was not suscepti- Cooper definitively II held that Goldfarb ble to a reasonable conclusion that own, and, on conception arrived at his patent was invalid on inventorship thus, practice his not in- reduction did grounds. F.3d at Cooper. ure years This an case. Forty unusual IV passed since filed for the reasons, at case. For the patent issue this Gore tried aforementioned we af- firm get patent a on the matter the district court’s determination that on which it was sued. The subse- patent plaintiffs standing established and that prior proceedings shaped decades of quent patent willfully infringed. defenses could raise it was what once AFFIRMED infringement. Once it sued failed issued, patent with was left HUGHES, Judge, concurring. Circuit scope exceptionally an circumscribed reasonable defense. novo, agree I that when de reviewed evidence this case shows that Gore’s In the proceedings, current Gore relied objectively were not defenses reasonable. those facts showed that in- separately I my write to reiterate belief on a vention was based material that Gore full court should review our will Cooper may invented and that have con- light jurisprudence fulness the Su ceived of the invention to Goldfarb preme recent in High Court’s decisions (though Goldfarb won the because mark v. Allcare Management Inc. Health was the reduce it practice). he first to —Inc., -, Sys., U.S. S.Ct. if persuaded But even it could have 188 L.Ed.2d Octane Fit jury it did not—Gore could not —which ness, Fitness, Inc., LLC v. ICON legal Health requirements have evaded the — U.S. -, joint inventorship. Ultimately, to have S.Ct. L.Ed.2d (2014). prevailing chance of call ques- stood reasonable Those decisions into Indeed, anything, presented permission histological if the evidence his without took plain- III, litigation in the further bolstered the sug- slides. Bard at 10. Other evidence position. example, tiffs' district For as the gested Cooper did so because still noted, shortly after Goldfarb filed parameters did not understand what mattered patent application in October grafts. Id. 10-11. successful entering laboratory admitted to Goldfarb’s Dol determining copyright infringement. for will See two-part test of willful tion our (9th Tech., LLC, Agee, Cir. fulness, 497 man v. 157 F.3d Seagate In re (en 1998) (“The (Fed.Cir.2007) banc), of will finding district court’s F.3d 1360 reviewing [copyright] infringement for ful is reviewed novo de standard our error.”). determination, clear court’s willfulness district v. Peripheral Inc. W.L. NEWMAN, Judge, dissenting. Circuit Assocs., 1006- 682 F.3d &Gore (Bard II). (Fed.Cir.2012) Halo See This case to the Circuit returns Federal Elecs., Inc., Elecs., Inc. v. Pulse appeal of a district court decision on on J., (O’Malley, 1371, 1383 remand from an en banc decision of this concurring). infringement The is willful court. issue en banc consequences, and its which this why de novo case demonstrates This court remanded for de novo determination problematic. is The of willfulness review law, judgment vacating as a matter of of Gore’s strength is over divided jury entered on the verdict. Each side ad- joint inventorship defense. argument about whether changed vances a sound The en banc court standard a in this case raises “substan- procedure the evidence for determination of willful And joint inventorship. question” infringement consequences tial its in order court, likewise, a provided uniformity to bring the district national reasonable If opinion. thorough and well-reasoned application penalty. of this The court held opinions reasonable objective of these several of a de- one that the reasonableness ultimately govern, should be infringement question must is a legal fense judge, judge, of the district whose opinion assess- determined and is decided be litigation is informed positions ment of appeal. de novo held that experience and who has “lived with jury question, trial is not infringement willful a period over of time.” prolonged judgment the case a vacated in- of willful at 1748. Highmark, 134 S.Ct. fringement punitive damages jury ver- district court had entered on the of review A more deferential standard dict. with the standards for would be consistent remand, fact reviewing questions of law and On the district court re-entered mixed See, entirety, e.g., Highmark, prior judgment reciting its other contexts. (holding abuse of the evidence that in its supported 1748-49 view 134 S.Ct. judgment. my for re here on col- proper Again appeal, is the standard discretion attorney leagues panel repeat fees in on this viewing award of cases, may exercise, questions apply of law court’s do not de novo stan- “[although relevant....”); review, not apply cases Pierce dards and do the clear some be Underwood, 552, 558, precedent requires 108 S.Ct. determination of 487 U.S. (holding “objective Gore acted with reck- 101 L.Ed.2d whether Tech., LLC, proper Seagate is the standard lessness” re abuse of discretion (Fed.Cir.2007) (en banc). reviewing of whether a F.3d determinations “substantially justi my position colleagues attempt Nor do to meet the litigant’s responsibility purposes fee-shifting impart under reasonable fied” for Act, consistency although objective standards to Equal Access to Justice al- purely aspect activity, on a of “willful” frequently penalty determination turns issue). though why also consistent this was the reason the en legal It would finding system reviewing a court established of de novo with the standard for banc determination of this ap- of law I. The Interference plied particular to the facts of the case. saga of Bard versus Gore started forty-one years ago, when employee objective Precedent that the establishes Peter Cooper, manager of the Gore plant prong of willful “tends not to Flagstaff, Arizona, invited Dr. David infringer be met where an accused relies Goldfarb at the Arizona Heart Institute to charge reasonable defense to a participate in an ongoing study of Gore’s Solutions, infringement.” Spine Inc. v. product, expanded polytetrafluoroethylene USA, Medtronic Danek Sofamor (“ePTFE”), for use as a prosthe- vascular (Fed.Cir.2010). 1305, 1319-20 When sis, i.e., graft as a to repair and replace there is a “substantial of invalidi- blood vessels. ty unenforceability” patent, will- (brand Gore’s ePTFE polymer, name arise, ful infringement cannot as a matter Gore-Tex®), unique has properties based Seagate, law. 497 F.3d at 1371. The on its microporous structure, and fibrous panel majority does not review the evi- as well adaptability as the of that structure apply objectively; dence and the law the to various uses. employees sought to merely searches and recites ad- develop ePTFE, new applications for verse evidence. continued modify study- structure in The majority ignores that Gore’s em ing new Beginning 1970, uses. around ployee Cooper was the first to conceive of Peter Cooper led the development of ePT- the ruling final of the patent invention — FE prosthetic grafts. vascular court; interference tribunal and this the Cooper and other employees col-' majo'rity ignores that the '135 laborated with vascular surgeons in the pending twenty-eight years, while Gore United States and Japan, surgically who developed this Gore-Tex® prosthetic inserted Gore’s ePTFE vascular tubes of product; majority ignores that the dis varying porous and fibrous structure into enjoin trict court provi refused to dogs sheep. arteries of Compati- prosthetic sion of these products after this bility of ePTFE with human tissue and its litigation, citing “potentially devastat effectiveness as mammalian grafts were ing public health consequences”1; In demonstrated. addition to scientific court does not mention” inequitable publications and the PTO interference rec- conduct that pervades Dr. Gold-farb’s ac ord, history details of this may be in found obtaining tions in patent, including this court’s opinions the interference witness; perjury key confessed of a appeals, reported at Cooper Goldfarb, v. court does not mention the action for mis (Fed.Cir.1998) I”) 154 F.3d 1321 (“Cooper appropriation of Gore’s trade secrets Cooper Goldfarb, 240 F.3d 1378 Gore ex-employees testify who now against ”). (“Cooper II Gore; the court does not mention the solid Cooper, along with Gore em- support theory for the that there is at least Mendenhall, ployee Richard contacted Dr. joint invention. recently who had arrived at the I history conflict, start with the of this Institute, Arizona Heart him invited for it is relevant to infringe- both participate willful study. the ePTFE vascular ment and the award of punitive damages. Cooper gave Dr. Goldfarb reports 920300, Peripheral (D.Ariz. 1. Bard Inc. v. W.L. Gore 2009 WL at *5 March Assocs., Inc., 03-CV-0597-PHX-MHM, 2009). No. PTO previously appeal, evaluated On this court affirmed the had surgeons who Cooper con gave ruling that first to grafts, as vascular ePTFE tubes subject matter of count. effective ePTFE ceive the samples him most in the refusal A This court found error PTO’s evaluations. tubes based “in to consider whether Goldfarb’s work Cooper Dr. Goldfarb accom- letter from they Cooper’s The PTO had samples stated that ured” to benefit. panying these not attempt that the of inurement had “represent the latest achieve stated issue artery hearing, been raised at final but this court patency rates small satisfactory “in had been raised 240 F.3d at 1384. found that inurement prosthetics.” brief,” final places hearing several samples by Dr. tested the Gore 154 F.3d at and remanded inserting dogs them blood vessels to the PTO consider inurement. On by microscope. their structure inspecting remand the PTO held that Goldfarb’s work 1974 Dr. Goldfarb filed On October benefit, relying did inure to Cooper’s patent application the structure of affidavits employee, on of a Dan Det- Gore samples he tested. most effective ton, perjury.2 later admitted to Coo who Cooper patent appli- filed a previously had per 240 F.3d at 1380-81. structure, covering cation same and Dr. The PTO awarded the the PTO an interference between declared 6,436,135 Patent No. U.S. Cooper applications. and Goldfarb (“the patent”) August issued decision, In its interference the PTO Meanwhile, during twenty-eight Cooper held that was the first conceive years patent pendency, developed Gore matter of the interference variety grafts prosthetic ePTFE for a count, “had ruling Cooper conceived uses, medical and and achieved commercial all the of the count” and “had limitations success. conception of June 1973.” established However, I, at Cooper 154 F.3d Infringement Litigation The II. PTO also held that Goldfarb was the first 28, 2003, Dr. On March practice, declining to reduce the count to licensee Bard sued for in- exclusive Gore with credit reductions patent. Although fringement to whom practice surgeons Coo- attempted to raise several defenses per previously provided had ePTFE tubes invalidity enforceability, trial and at grafts testing evaluation. Al- motion, jury the district court and the though the record contains extensive evi- that the repeatedly were told Federal Cir- tests, reports, dence of these contin- finally cuit adjudged had that Dr. Goldfarb collaboration, ued the PTO tribunal also was entitled to the diligence did not to show permit date, filing ground diligence jury on the a verdict of willful rendered pleaded infringement, damages had in the interference. and assessed meas- been Thus Bard’s priority profits prod- the PTO awarded to Gold- ured as lost competing prod- farb. had a ucts for Bard your testimony knowingly Perjury? 2. Counsel: Is there Counsel: Yes, false or truthful? Detton: it was. Mr. Vascular, Trans.1915:5-15, No, Peripheral Bard Mr. Detton: that was inaccurate testi- Inc., Assocs., mony. Inc. v. W.L. Gore & No. 03-CV- 0579-PHX-MHM, 27, 2007), (D.Ariz. knowingly Nov. Was it false? Counsel: Yes, Mr. ECF No. 787. Detton: was. jury royalty uct. The also awarded a to the face of a high likelihood of infringing a 18%, ranging Bard rates from 10% to patent known IV, to be valid. Bard for Gore sales of ePTFE products for F.3d at 1006. This objective component which there was no competing prod- review, receives de novo as a matter of uct. damages These totaled law. $185,589,871.02. Then, jury’s based on the objective prong of willful infringe finding infringement, of willful ment is not met when there is a reasonable damages, court doubled the and awarded defense to the charge of infringement. Goldfarb and Bard their attorneys’ fees Solutions, Spine 1320; 620 F.3d at see Vascular, and costs. Bard Peripheral Inc. Elecs., also Halo Elecs., Inc., Inc. v. Pulse Assocs., v. W.L. Gore & 769 F.3d (Fed.Cir.2014); Ad (D.Ariz.2008) (“Bard ”). F.Supp.2d 1083 I (AFT) vanced Fiber Techs. Trust v. J & L split panel A of the court affirmed. Bard Servs., Inc., Fiber Peripheral Inc. v. W.L. Gore & (Fed.Cir.2012). Then, if a district court

Assocs., Inc., 670 F.3d 1171 objective holds the objec defenses to be (“Bard II”). requested rehearing. tively unreasonable, jury’s subjective findings IV, can be reviewed. Bard Rehearing III. en banc F.3d at 1008. granted The Federal Circuit rehearing After clarifying the legal principles, this en banc on the issue of infringe willful court remanded to the district court for punitive ment and the award of damages redetermination of willful infringement. attorneys’ and fees. The en banc court The district court reviewed the issues and rulings, vacated these district court stat prior judgment reinstated its of in- willful ing that opinion “the of the court ac fringement, damages, double and attor- companying judgment modified, the is neys’ fees. The district court stated that panel accordance with the opinion ac the supported evidence prior the judg- companying this order.” Peripher Peripheral Vascular, ment. Bard Inc. v. Vascular, al Inc. v. W.L. Gore & As Assocs., Inc., W.L. 03-0597, Gore & No. socs., Inc., (Fed. Fed.Appx. 476 (D.Ariz. 2013) 2013 WL 5670909 Oct. Cir.2012) (en banc) (“Bard III”). The (“Bard V”). Today’s majority now af- court cited the consistency need for firms. predictability reasonable in resolving the pervasive infringement, issue of willful Appeal This IV.

and ruled that willful infringement is “a question of law underlying based on The majority, mentioning while mixed questions of law and fact and is that willful infringement is now a matter of review,” to de novo Bard Pe law, does not undertake the required de ripheral Inc. v. W.L. Gore & novo review. Determination of a matter of Assocs., Inc., (Fed. 682 F.3d requires law positions consideration of the Cir.2012) (“Bard IV”). sides, of both with due attention to the

The court remanded for de novo deter- burdens proof. and standards of As stated Tech., mination of infringement. willful in Seagate The ruling a of willful in- explained that willful infringement fringement objective requires recklessness objective contains subjective compo- in the face of a high likelihood of infringing nents, objective and that component patent known to be valid and enforce- requires proof objective of recklessness in able. III, (Newman, J., reviewing at 1009 court is Bard question dissenting part). of These are all substan- decision

not whether enforceability supported by questions validity substantial tial can be found law question infringe- patent, weighing against of willful '135 reck- evidence. infringer disregard. is accused less ment whether invalidity raised substantial presented by also motion seven unenforceability regarding the pat- unenforceability grounds of of the '135 F.3d at Seagate, ent. re patent, quoted by the district court as cannot lie “when a Willful follows: raised,” Advanced reasonable defense attorneys their 1. Plaintiffs Fiber, 1377, “[although] at Patent failed advise the Office Dr. substantial evidence to record contains Impra Volder’s connections with his implicit finding” support jury’s of va- affidavit in he expressed his Solutions, lidity enforceability. Spine opinion on issue of obviousness as a required showing 620 F.3d at 1319. The presumably impartial person skilled in met, objective is not as a recklessness art. law, patent is matter of when the reason- attorneys and their Plaintiffs ably subject challenge. any failed to advise the Patent Office disputed It cannot be raised rejection time withdrawal questions challenging several substantial patent 1 to Claims 10 of enforceability of validity Baker, in 1978 application, that Lenox previously I outlined some of M.D., repudiated para- withdrew and grounds on which the '135 graph 6 of affidavit filed with vulnerable: the Patent Office. ruling of the Patent and Trade- filing 3. The of and reliance on two Office, by the mark affirmed Federal Detton, affidavits D. not- from Dan Circuit, employee Cooper that Gore’s withstanding Mr. Detton’s repudiation of was the first to conceive of invention they filed, those affidavits before were (2) Goldfarb; by patented that was the subsequent and Plaintiffs’ failure to ad- provided fact that Goldfarb with of vise the Patent Office Mr. Detton’s that the Gore —Tex® tubes Goldfarb repudiation his of 1976 affidavits. (3) the fact that test- patented; Goldfarb reliance Plaintiffs’ on an error Cooper’s in dogs ed the tubes re- the that Patent Office made in connec- (4) fact quest; previ- the that others had the publication tion with Matsumoto ifi the in ously tested Gore —Tex® tubes in the Ex- Surgery, which Patent Office reported dogs sheep, and had and mistakenly interpreted aminer the wall that published the same results Goldfarb in publication thickness to be 1 (5) patented; later the fact the (“mm”) millimeter rather 0.5 than mm. pending for application Goldfarb attorneys doubt to the years, leaving as outcome 5. Plaintiffs their provide Office. It is irrelevant failed to to the Pat- the Patent information no.t of that the eventual allowance the Gold- ent Office about Dr. Volder’s work and the co- application possible farb included admitted role as an inventor or Detton, inventor, an perjured including affidavit affidavit the failure to disclose withdraw, asked de- subsequent that Detton Goldfarb the existence of and and was refused. struction of the notebook. Voider attorneys question their joint 6. Plaintiffs invention could be comply with the Patent Office reasonably failed raised defense: requiring production of material order Joint Inventors —... may Inventors ap- v. Impra information from the Goldfarb ply (1) patent jointly for a though even litigation. they did not physically together work or attorneys 7. Plaintiffs their (2) time, at the same each did not make failed to advise the Patent Office Exam- type contribution, same or amount of ship- iner of the existence the Gore or each make a did not contribution log, ping which contained information of every matter claim of graft art about vascular wall thick- nesses that was inconsistent with 116(a) (2012). 35 U.S.C. 1976 affidavits of Harold Green and Mr. The panel majority rules that Gore’s Detton, and with argu- inconsistent joint invention fails defense because Gore ,Dr. ment made Goldfarb and Mr. cannot show “collaboration” between Coo- persuading Patent Office Sutton per and to every Goldfarb as limitation in Examiner to withdraw the November the claims. Joint invention does not re- rejection to 10. Claims quire every limitation, collaboration as to Peripheral Inc. v. W.L. as the Moreover, statute makes clear. Assocs., Inc., F.Supp.2d when the PTO’s interference procedures (D.Ariz.2008). 1173-74 are removed from the deferential review Each asserted ground inequitable they enjoyed status I and Coo- summarily conduct was dismissed per the correctness of these rulings can court, that, which if district stated even reasonably challenged be infringe- misrepresented Dr. intention- ment context. withheld from ally information the PTO events, In all it question relates to despite perjury, the admitted the false willfulness is whether defense of inval- prose- information was “not material to the idity reasonably raised, could patent.” cution of the '135 Id. at 1215. eventually whether it succeeded. The reasoning That cannot be sustained. flaws in way the Goldfarb and the addition, argument incor provided sufficiently obtained reason- inventorship, joint rect or at least inven validity able defenses to both enforce- tion, viable, quite and raises a substan ability. entirety On premises validity, requires tial and applying legal standards, the correct Given inventorship. correct the PTO’s judgment of willful can- findings that Cooper was the first to con not stand. invention, this ceive court’s that Cooper affirmance- conceived of the Damages Y. including length invention the fibril limita tion before found, Goldfarb evaluated the 2-73 Even when willful is graft, see 240 punitive RF F.3d at 1384- does not damages follow that I, 1326), (citing Cooper 85 F.3d at must imposed, 154 be or that the damages practice public Goldfarb’s reduction to of the ma must be doubled. benefit of presented terial that Gore’s product ignored. made cannot Puni- patenting, at least tive damages raises substantial are intended to discourage “joint inventorship.” behavior, of life-saving The stat bad not medical de- clear, is surely presents enough ute of vices. court specifically This en banc damages parted product, as and the court’s review of award asked for enjoin the willfulness determination. its cannot be provision, refusal related my shrift from gets doubling short of punitive Such review reconciled with ignore the en banc simply who colleagues, damages. showing, There was no or even premises that the harm, admonition charge, required intentional as of action receive ob- of “willful” consequences out. punishment for severe as here meted consistent, nationally implementa- jective, (Second) Restatement See Torts tion. (1965). finding that a of will holds “Precedent Thus, regardless of willfulness whether authorizes, require, but does not fulness a supportable ruling, doubling v. damages.” Corp. Laitram enhanced award From damages is untenable. (Fed.Cir. 947, Corp., NEC my ruling, I colleagues’ contrary respect- 1997); Corp. v. Advanced Micro Brooktree fully dissent. (Fed. Inc., Devices, F.2d Cir.1992) (refusal damages de to enhance infringe jury’s verdict willful

spite the Group,

ment); Mfg. Co. Allen Modine

(same); Hughes Prod. Delta-X v. Baker (Fed.Cir.

Tools, Inc., 984 F.2d

1993) (considering whether the defendant challenge infringe

made a substantial

ment). judicial precedent supports

Extensive damages the case enhance when refusal to In re THE NEWBRIDGE CUTLERY counsel modera equities close (trading Newbridge COMPANY tion, puni award of punishment. Silverware). infring damages depends tive both the injury culpability, er’s degree No. 2013-1535. infringement imposed pat- on the that the Appeals, United States Court recovery full Bard was awarded

entee. Federal Circuit. prod to the loss of business its that “the uct. The district stated Jan. that a fair and full Court is satisfied compensatory money damages, amount progressive compul with a

when combined license,

sory adequately compensate will injuries, such the harsh and

Plaintiffs’ remedy injunction

extraordinary —with devastating public potentially health Pe be avoided.” Bard

consequences —can Vascular, Inc. v. W.L.

ripheral

Assocs., 03-CV-0597, No. 2009 WL (D.Ariz. 31, 2009).

920300,at *5 Mar. recognition of the

The district im-

public’s interest and medical benefits

Case Details

Case Name: Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc.

Court Name: Court of Appeals for the Federal Circuit

Date Published: Jan 13, 2015

Citation: 776 F.3d 837

Docket Number: 2014-1114

Court Abbreviation: Fed. Cir.