In a bruising patent infringement dispute centered on blood vessel grafts that reaches back over three decades in time (to the presidency of Gerald Ford), a deeply divided panel of the U.S. Court of Appeals for the Federal Circuit, over an eloquent dissent, awarded C. R. Bard almost $400 million in damages at the expense of W. L. Gore and Associates.  Bard Peripheral Vascular, Inc. v. W. L. Gore and Associates, Inc., Case No. 10-1510 (Fed. Cir., Feb. 10, 2012) (Gajarsa, Sr. J.) (Newman, J., dissenting).  In the words of the majority, it was drawing “the final curtain of the saga.”

After a Gore employee (Cooper) sent Goldfarb a synthetic tubes for testing as possible material for vascular grafts, Goldfarb conducted animal experiments, found the material worked well as a graft and (in 1974) applied for a patent.  Litigation over inventorship and ownership ensued, with Goldfarb being awarded ownership after one of the longest, most contentious patent interferences in history (that occasioned two trips to the Federal Circuit).  

Afterward (in 2003) Goldfarb (and its licensee, Bard) filed suit against Gore for patent infringement, winning a jury award of $185 million, on which the district court awarded enhanced damages and attorneys’ fees, bringing the total award to almost $400 million.  Although the district court did not grant Bard an injunction, it did impose (on Gore) an ongoing royalty in the range of 12.5 percent to 20 percent (depending on the graft).  Not surprisingly, Gore appealed. 

In its appeal, Gore contended that the jury award on inventorship, anticipation, obviousness, written description and willful infringement were not supported by substantial evidence and that the district court abused its discretion regarding enhanced damages, attorneys’ fees, costs and ongoing royalties.  The majority disagreed with Bard on all issues.  


The jury found that Cooper and Goldfarb were not joint inventors (under § 116) and the district court, noting substantial evidence on which a reasonable juror could rely, refused Gore’s post-trial motion on the issue.  Citing to the substantial evidence rule and the record of the long interference proceeding (“we are not free to ignore the long history of this case and these prior determinations…”) the majority agreed with the district court, finding that the “lack of communication [between Cooper and Goldfarb] and utter lack of understanding of what would make a successful graft is substantial evidence in support of the jury’s verdict implicitly that Cooper’s contribution was insignificant.”  Responding to the dissent, the majority explained “[w]e cannot revisit the facts anew, nor meander through the record and select facts like our favorite jelly beans, nor characterize the facts as the Bard would in a Shakespearian tragedy.”  


The district court, in denying Gore’s post-verdict motion on anticipation, determined that a 1973 article (Matsumoto) was not anticipatory because it was not enabling.  Citing to the clear and convincing evidence and substantial evidence standards, the Court reviewed the conflicting evidence on the reports of Matsumoto’s work and concluded that there was substantial evidence that Matsumoto did not meet the claimed intermodal distances, there was substantial evidence that Matsumoto was not enabling and finally that since Matsumoto had previously been considered by the U.S. Patent and Trademark Office (USPTO), under the Supreme Courts holding in Microsoft v. i4i (see IP Update, Vol. 14, No. 6) “the district court did not err” in denying Gore’s motion on anticipation.  


Pointing to the “exhaustive” district court finding on the teachings of the prior art, the differences between the prior art and the claimed invention and the objective criteria of non-obviousness, together with the prior consideration by the USPTO of its consideration of the same prior art, the Court concluded district court did not err in denying Gore’s motion on obviousness.  

Willful Infringement

The willfulness issues centered on whether Bard established “by clear and convincing evidence that [Gore] acted despite an objectivity high likelihood that its actions constituted infringement of a valid patent” and that this objectively defined risk … was either known or so obvious that it should have been known to [Bard].”  In re Seagate, see IP Update, Vol. 10, No. 8. 

In this instance, the Court noted the 18-year-long interference between Cooper and Goldfarb and the result of it.  The majority also concluded that the opinion of Gore’s counsel, introduced on the issue of willfulness and authored by Gore’s interference counsel’s law firm, “was not based on an objective perspective” and that the district court correctly “viewed the objectivity of the opinion as questionable.”  Thus, the Court found “substantial evidence” had been presented to the jury to support “the finding that Gore knew or should have known of the objectivity high likelihood that its grafts infringed the … patent.”  

The Dissent

Judge Newman saw the case far differently than her colleagues.  In her view, the district court erred on the issue of joint inventorship, and she viewed the long and tortured history of the litigation as “permeated by errors of fact and law, lies, inconsistencies and injustice.”  In a stinging dissent, Judge Newman characterized the majority decision as holding “that a person who performs the requested test of a material that is supplied to him for testing for a specific use, can then, when the test is successful, patent the material he was provided, for the use for which it was tested.”  As stated by Judge Newman, “[m]y colleagues on this panel endorse and defend these errors and improprieties, and now rule that Gore is the willful infringer of this improperly obtained patent on Gore’s produce and use.”  Judge Newman chides the majority as misstating the findings of the 18-year-long interference as well as the two Federal Circuit decisions it spawned and distinguished the priority issue decided in the interference from the joint inventorship (§ 116) issue presented to the jury in the infringement case.  As viewed by Judge Newman “[w]hether or not there was some form of joint invention that could include Goldfarb, Gore can not be excluded from the right to continue to do that which it disclosed to Goldfarb and had previously been published by Matsumoto and Volder.”  The dissent, citing Shakespeare, summed up that “[a]t a minimum a new trial is required, least we make a ‘scarecrow of the law.’”