Federal Circuit Draws The 'Final Curtain' On A Long Saga, Affirming The District Court's Decision That The Patent-In-Suit Is Not Invalid And Is Willfully Infringed

Last Month at the Federal Circuit - March 2012

Judges: Newman (dissenting), Gajarsa (author), Linn

[Appealed from D. Ariz., Judge Murguia]

In Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., No. 10-1510 (Fed. Cir. Feb. 10, 2012), the Federal Circuit affirmed the district court's findings that U.S. Patent No. 6,436,135 ("the '135 patent") was willfully infringed and not invalid for improper inventorship, anticipation, obviousness, or lack of written description. The Court also affirmed the district court's award of enhanced damages, attorneys' fees and costs, and an ongoing royalty in favor of Bard Peripheral Vascular, Inc. and David Goldfarb (collectively "Bard").

The technology at issue involves prosthetic grafts used to bypass or replace blood vessels. The grafts are made from highly expanded polytetrafluoroethylene ("ePTFE"), which W.L. Gore & Associates, Inc. ("Gore") sells under the brand name "Gore-Tex." Peter Cooper was the Plant Manager of Gore's Arizona facility and primarily was involved in making ePTFE tubes. Cooper provided the tubes to various researchers, who evaluated their suitability as vascular grafts. One researcher was David Goldfarb, a surgeon at the Arizona Heart Institute ("AHI"). Goldfarb experimented with twenty-one grafts supplied by Cooper, one of which was determined to be a successful implant in a dog.

In April 1974, Cooper filed a U.S. patent application claiming the use of ePTFE as a vascular graft. In October 1974, Goldfarb also filed a U.S. patent application claiming the use of ePTFE as a vascular graft. There followed an eighteen-year interference ("Interference") and two appeals to the Federal Circuit, Cooper v. Goldfarb ("Cooper I"), 154 F.3d 1321 (Fed. Cir. 1998), and Cooper v. Goldfarb ("Cooper II"), 240 F.3d 1378 (Fed. Cir. 2001). Ultimately, Goldfarb was awarded priority of invention because Goldfarb established that he had reduced the invention to practice before Cooper. Cooper I, 154 F.3d at 1326-27. The Court in Cooper II explained that Cooper conceived the invention, but only after sending to Goldfarb tubes which Goldfarb used to conceive the invention and reduce it to practice.

The '135 patent issued with claims to a vascular prosthesis comprising ePTFE "having a microstructure consisting of nodes interconnected by fibrils which permits tissue ingrowth, wherein an average distance between nodes is not less than about 6 microns." Slip op. at 4-5. Bard filed suit against Gore for infringement of the '135 patent. A jury found the '135 patent valid and willfully infringed by Gore, awarded Bard lost profits of $102 million, royalties of $83 million, and set a reasonable royalty rate of 10%. The district court awarded enhanced damages, doubling the award to $371 million and awarded Bard $19 million in...