April 16, 2014

Bard v. Gore: Joint Inventors or Just One?

In view of the recent petition for cert. filed by W. L. Gore, asking the Supreme Court to review the standards for joint inventorship, the February panel decision in Bard Peripheral Vascular, Inc. v. W. L. Gore & Assoc., Inc., 670 F.3d 1171 (Fed. Cir. 2012) just got a lot more interesting. The Fed. Cir. affirmed the panel decision en banc in June, (682 F.3d 1003), but did not disturb the panel’s 3/2 finding that the claimed PTFE (Gore-Tex®) vascular grafts were a sole, not a joint invention. What is unusual about this decision is that the “maker”, Cooper – an employee of Gore – was found not to be an inventor, while the “tester” – one Goldfarb, a surgeon at the Arizona Heart Institute, was found to be the sole inventor. In other words, while acknowledging that Cooper actually had the invention in hand and sent it to Goldfarb for testing, Cooper was found to know so little about the tubes he sent, that Goldfarb’s discovery of the critical claim element not only was sufficient to make him a co-inventor, but his work did not “inure” to the benefit of Cooper to the extent that Cooper should be properly named as a co-inventor.

The grafts comprised expanded, porous PTFE having a microstructure consisting of nodes interconnected by fibrils, which permits tissue ingrowth, where an average distance between nodes is not less that about 6 microns. Now things get complicated.

The panel summarized the Fed. Cir.’s earlier fact-finding as establishing that Cooper (a) made expanded PTFE tubes, (b) provided them to researchers for study as vascular grafts, and (c) “[d]uring the course of this work, Cooper discovered that material from ePTFE tubes with fibril lengths …[of about 5 to 100 microns] was suitable for use in vascular grafts.” If a client came to you with an invention disclosure by Cooper setting forth these facts, wouldn’t you be comfortable naming him as a sole inventor?

Before you even decide whether or not to read further, perhaps it is enough, beginning with the precedent of Goldfarb’s having won an interference with Cooper (even Cooper was the senior party), to recognize that all the panel was trying to do was decide whether or not Cooper should have been named as a co-inventor. The panel here, with Newman dissenting, held that they were not co-inventors because Cooper did not communicate to Goldfarb that the intermodal distance was the key to creating good grafts, and so Cooper did not significantly contribute to Goldfarb’s conception of the invention:

“His failure to convey any information or requests regarding fibril length prevents Goldfarb’s determination of the fibril lengths of the material from inuring to his benefit…[N]o evidence of record indicates that Cooper knew the fibril lengths of the material tested by Goldfarb at the relevant time, i.e., prior to Goldfarb’s [actual] reduction to practice in 1973.”

I think that what feels “wrong” about this decision is that Cooper knew a lot about what PTFE grafts should look like by 1973; arguably he just didn’t know the structure of the tubes he sent to Goldfarb, or tell Goldfarb what he knew about the general requirements for PTFE grafts. And, as if to add luster to Goldfarb’s claim, the panel reports that Goldfarb reported his results back to Gore. But, remember, once again, the decision tells us that Cooper knew quite a lot about the node/fibril issue before he sent out the tubes to Goldfarb. He just didn’t know that the particular tubes he sent could be successfully used in vivo.

As part of its summary of an adverse interference decision, awarding priority to Goldfarb, the Fed. Cir. “explained that Cooper conceived of the invention, but only after sending to Goldfarb the tubes which Goldfarb used to conceive the invention and reduce it to practice. Cooper II, 240 F.3d at 1381. Cooper could not have known that the tubes sent to Goldfarb met the claim limitations when he sent them.” The panel gave weight to the fact that Cooper did not communicate his finding (of the node/fibril element?)  to Goldfarb before Goldfarb made the invention nor did [Cooper] exercise diligence in an attempt to reduce the invention to practice.” However the application that eventually issued with the graft claims was filed in April 1974, presumably about a year after Cooper came up with the key parameters – although this opinion does not say when that was. Okay, so it does not matter when Goldfarb actually reduced the invention to practice, because Cooper failed to exercise diligence in his later constructive reduction to practice?

That would make sense, except that, while Goldfarb may have actually conceived of the invention and actually reduced it to practice prior to Cooper’s actual reduction to practice, actual reduction to practice is not required to establish inventorship. The panel’s reading of the earlier holding that “Cooper conceived of the invention, but only after sending to Goldfarb the tubes which Goldfarb used to conceive the invention and reduce it to practice [actually],” conflicts with the panel’s factual history of the case, as quoted above that Cooper discovered that the expanded material was suitable for use as vascular grafts, unless the panel means to say that Cooper made the tubes and only appreciated the key parameters after Goldfarb had done his work. But, as Judge Newman notes, this outcome conflicts with In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (the discovery of an inherent property of a known composition does not render the composition patentable to the observer of the inherent property) and with Gen’l Elect. Co. v. Jewel Incandescent Lamp Co., 326 US 242, 249 (1945).

Judge Newman’s dissent, as usual, is cogent. In fact, it reads like a good mystery novel. She clearly feels that Cooper’s contribution, including his earlier conception, at least entitled him to be a co-inventor, if not the sole inventor:

“The PTO found and the Federal Circuit affirmed that Cooper was the first to conceive the invention, and that Cooper provided Goldfarb with the material embodying the invention for further testing by Goldfarb, see Cooper I, 154 F.3d at 1330. These rulings have never been challenged, even in the conceded perjured testimony, and total negate the panel majority’s claims on behalf of Goldfarb. The law has heretofore been clear that a person who tests a product provided by another, for the purpose designated by the provider, cannot acquire the exclusive right to that product for that use, to the exclusion of the inventor of the use. Such a rule violates the most fundamental principles of patent law and property rights. The panel majority’s endorsement of such a rule will breed much mischief, to the disruption of routine testing relationships.”

The level of legal eloquence, coupled with a plot out of Turow, should whet your appetite for more.

© 2014 Schwegman, Lundberg & Woessner, P.A. All Rights Reserved.

About the Author


Warren Woessner is a registered patent attorney and a founding shareholder of Schwegman, Lundberg & Woessner. His practice focuses on chemical patent law, including biotechnology, pharmaceuticals, vaccines, medical treatments, diagnostics, and biofuels and agricultural chemistry, including related opinion and licensing matters.


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