Bard Peripheral Vascular v. W.L. Gore & Associates , 776 F.3d 837 ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
BARD PERIPHERAL VASCULAR, INC., AND
DAVID GOLDFARB, M.D.,
Plaintiffs-Appellees,
AND
C.R. BARD, INC.,
Counterclaim Defendant-Appellee,
v.
W.L. GORE & ASSOCIATES, INC.,
Defendant-Appellant.
______________________
2014-1114
______________________
Appeal from the United States District Court for the
District of Arizona in No. 2:03-CV-00597-MHM, Judge
Mary H. Murguia.
______________________
Decided: January 13, 2015
______________________
MICHAEL W. MCCONNELL, Kirkland & Ellis LLP, of
Washington, DC, argued for plaintiffs-appellees and
counterclaim defendant-appellee. With him on the brief
were JOHN C. O'QUINN, WILLIAM H. BURGESS, DENNIS J.
ABDELNOUR and LIAM P. HARDY; STEVEN C. CHERNY, of
2 BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES
New York, New York; and JOHN L. STRAND, Wolf, Green-
field & Sacks, P.C., of Boston, Massachusetts.
JAMES W. PORADEK, Faegre Baker Daniels LLP, of
Minneapolis, Minnesota, argued for defendant-appellant.
With him on the brief were TIMOTHY E. GRIMSRUD; JARED
B. BRIANT and LESLIE B. PRILL, of Denver, Colorado; and
MICHAEL E. FLOREY and DEANNA REICHEL, Fish & Rich-
ardson P.C., of Minneapolis, Minnesota.
______________________
Before PROST, Chief Judge, NEWMAN and HUGHES, Circuit
Judges.
Opinion for the court filed by Chief Judge PROST.
Concurring opinion filed by Circuit Judge HUGHES.
Dissenting opinion filed by Circuit Judge NEWMAN.
PROST, Chief Judge.
W.L. Gore & Associates, Inc. (“Gore”) appeals from the
judgment of the United States District Court for the
District of Arizona of willfulness in the infringement of
U.S. Patent No. 6,436,135 (“’135 patent”). For the reasons
stated below, we affirm.
I
This dispute began with the filing of the 1974 patent
application from which the ’135 patent eventually is-
sued—twenty-eight years later. The technology and
patent claims that have been at issue are thoroughly
discussed in this court’s previous decisions involving the
’135 patent and underlying application. See Bard Periph-
eral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 670 F.3d
1171 (Fed. Cir. 2012) (“Bard I”); Cooper v. Goldfarb, 240
F.3d 1378 (Fed. Cir. 2001) (“Cooper II”); Cooper v. Gold-
farb, 154 F.3d 1321 (Fed. Cir. 1998) (“Cooper I”).
BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES 3
Briefly, the ’135 patent relates to prosthetic vascular
grafts made of highly-expanded polytetrafluoroethylene
(“ePTFE”). The ePTFE material is made of solid nodes of
PTFE connected by thin PTFE fibrils. It is sold by Gore
under the brand name “Gore-Tex.” The patent generally
covers a vascular graft formed by ePFTE that is thus
homogeneously porous—a structure that allows uniform
cell regrowth to establish a firm integration of the graft
into the body. The different claims of the patent are
directed to grafts made of ePTFE with varying internodal
distances, which are also called fibril lengths.
In 2003, Bard Peripheral Vascular, Inc. (“BPV”) and
Dr. David Goldfarb filed suit against Gore for infringe-
ment of the ’135 patent. A jury found the ’135 patent
valid and that Gore willfully infringed, and, in December
2010, the district court denied Gore’s motions for judg-
ment as a matter of law (“JMOL”) reversing the verdict.
Gore appealed, and, in February 2012, the panel affirmed.
Bard I, 670 F.3d at 1193. The en banc court denied
review but granted rehearing “for the limited purpose of
authorizing the panel to revise the portion of its opinion
addressing willfulness.” Bard Peripheral Vascular, Inc. v.
W.L. Gore & Assocs., Inc., 476 F. App’x 747 (Fed. Cir.
June 14, 2012) (en banc). The panel accordingly vacated
the parts of its opinion discussing willfulness and allow-
ing enhanced damages and attorneys’ fees. Bard Periph-
eral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 682 F.3d
1003, 1005 (Fed. Cir. 2012) (“Bard II”). It held that as to
the threshold determination of willfulness, “the objective
determination of recklessness, even though predicated on
underlying mixed questions of law and fact, is best decid-
ed by the judge as a question of law subject to de novo
review.” Id. at 1007. The panel remanded “so that the
4 BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES
trial court may apply the correct standard to the question
of willfulness in the first instance.” Id. at 1008. 1
On remand, the district court again found that, in
view of Bard II, it was “clear to this Court, just as it was
to the jury, that Defendant, as a ‘reasonable litigant,’
could not have ‘realistically expected’ its defenses to
succeed.” Bard Peripheral Vascular, Inc. v. W.L. Gore &
Assocs., Inc., No. 03-0597, 2013 WL 5670909, at *12 (D.
Ariz. Oct. 17, 2013) (order denying JMOL on willful
infringement) (“Bard III”). Gore appeals. We have juris-
diction under 28 U.S.C. § 1295(a)(1).
II
Gore argues that at the time of suit, neither BPV nor
Goldfarb had standing to sue for infringement of the ’135
patent. Gore thus seeks to vacate the district court’s
judgment in its entirety and to have the case dismissed
for lack of jurisdiction. The crux of Gore’s argument is
that at the time the suit was filed, only C.R. Bard, Inc.
(“Bard Inc.”) could have possessed standing to sue. We
reject that argument.
In 1980, Goldfarb—who was the inventor and original
assignee of the ’135 patent’s application—entered into a
license agreement with Bard Inc. involving the applica-
tion and any patents that might issue. Gore argues that
in that agreement, Goldfarb granted all substantial rights
to the patent—thereby resulting in a virtual assignment
to Bard Inc. In 1996, Bard Inc. acquired IMPRA, which
later became a wholly owned subsidiary, BPV, and in
September, Bard Inc. transferred its interest in the 1980
agreement to BPV. Gore argues that because there is no
1 Gore sought to appeal the question of inventorship
under 35 U.S.C. § 116 to the Supreme Court, which
denied its petition for certiorari. W.L. Gore & Assocs., Inc.
v. C.R. Bard, Inc., 133 S. Ct. 932 (2013).
BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES 5
evidence of a written instrument effecting the transfer of
the interest to BPV, BPV did not in fact acquire standing
to sue for infringement. In sum, Gore contends that both
plaintiffs lacked standing: Goldfarb, because he had
virtually assigned his rights to Bard Inc., and BPV,
because Bard Inc. had not properly transferred its rights.
Gore raised this argument on standing twice before at
the district court—prior to its first appeal in this case.
Gore first filed a pre-trial JMOL motion on standing,
which the district court denied. Gore again raised the
issue as a post-trial JMOL motion, which the district
court again denied. The district court’s discussion of the
standing issue and denial of Gore’s motion was contained
in the same March 31, 2009 opinion and order denying
Gore’s various other JMOL motions that Gore appealed to
this court. In that appeal, although the issue was not
raised in briefing, the panel confirmed that the district
court had jurisdiction under 28 U.S.C. § 1338(a). Bard I,
670 F.3d at 1178.
Gore does not claim that there exists any material dif-
ference between the argument it raised before the district
court then and that it now raises on this appeal. Indeed,
in its first appeal, Gore conceded that the district court
had jurisdiction. Brief for Appellant at 1, Bard I, 670
F.3d 1171 (Fed. Cir. 2012) (No. 10-1542), 2010 WL
4853331. Instead, Gore contends that we are not bound
by the prior panel’s determination on standing, based on
the fundamental principle that “[t]he question of standing
is not subject to waiver” because “[t]he federal courts are
under an independent obligation to examine their own
jurisdiction.” See United States v. Hays, 515 U.S. 737, 742
(1995).
The “party invoking federal jurisdiction bears the
burden of establishing” standing at any stage of the
litigation. Lujan v. Defenders of Wildlife, 504 U.S. 555,
561 (1992). In this case, Gore challenged the plaintiffs’
6 BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES
standing at the district court. The district court deter-
mined that the plaintiffs met their burden and had estab-
lished standing. On appeal, this court again confirmed
that the plaintiffs had standing. Gore argues that be-
cause it did not brief the issue on appeal, and the prior
panel did not discuss the issue of standing, the standing
issue has yet to be resolved with finality.
As an initial matter, however, we have no reason to
assume that the prior panel did not weigh standing. This
was not a case in which a standing issue remained
dormant in facts buried deep in the record, or which was
not recognized by either party or the trial court. While
Gore’s briefs in that appeal did not raise the standing
issue, the district court’s opinion discussing Gore’s stand-
ing challenge were attached to the opening brief as re-
quired pursuant to Federal Circuit Rule 28(a)(12). Had
the prior panel seen merit in Gore’s standing challenge, it
could have asked for additional briefing, as this court has
done in other cases. See, e.g., Consumer Watchdog v. Wis.
Alumni Research Found., No. 13-1377 (Fed. Cir. Nov. 14,
2013) (order requesting supplemental briefing on the
issue of appellant’s standing) ECF No. 29. We are bound,
therefore, by the prior panel’s determination that the
plaintiffs had standing and that the district court had
jurisdiction. See Gould, Inc. v. United States, 67 F.3d 925,
930 (Fed. Cir. 1995) (“The law of the case is a judicially
created doctrine, the purposes of which are to prevent the
relitigation of issues that have been decided and to ensure
that trial courts follow the decisions of appellate courts.”).
To be sure, there are exceptional circumstances in
which a panel may not adhere to the decision in a prior
appeal in the same case, when “(1) the evidence in a
subsequent trial is substantially different; (2) controlling
authority has since made a contrary decision of the law
applicable to the issues; or (3) the earlier ruling was
clearly erroneous and would work a manifest injustice.”
Id. This is not such a case. Gore raises no new facts in
BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES 7
this appeal and seeks only to relitigate the same standing
theory that the district court rejected before. Gore does
not point to any change in the relevant law. This is also
not a case in which the district court made findings on
remand that “undermine” the prior appellate affirmance
of standing. Pub. Interest Research Grp. of N.J., Inc. v.
Magnesium Elektron, Inc., 123 F.3d 111, 117 (3d Cir.
1997). And, we see no clear error in the previous decision
on standing that would warrant an extraordinary review
at this stage.
Indeed, on the merits, this is an easy question. We
review de novo the district court’s determination of a
party’s standing, while reviewing any factual findings
relevant to that determination for clear error. SanDisk
Corp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1377
(Fed. Cir. 2007). Gore’s argument hinges on the absence
of a written instrument transferring to BPV what it
contends was the virtual assignment from Goldfarb to
Bard Inc. See Speedplay, Inc. v. Bebop, Inc., 211 F.3d
1245, 1250 (Fed. Cir. 2000) (holding that a written in-
strument was needed to document the “transfer of propri-
etary rights” to support standing to sue for patent
infringement); 35 U.S.C. § 261 (“Applications for patent,
patents, or any interest therein, shall be assignable by
law in an instrument in writing.”) (emphases added).
However, BPV has never claimed that in 2003 it had all
substantial rights to the ’135 patent. 2 BPV’s position is
only that it was an exclusive licensee with the right to sue
2 In 2007, Goldfarb assigned his remaining inter-
ests in the ’135 patent to BPV. Gore argues that this
assignment was illusory since Goldfarb had already
granted all substantial rights to Bard Inc. in 1980. We
note that at most this transfer corroborates BPV’s posi-
tion that the parties clearly understood that BPV was
Goldfarb’s licensee at the time the suit was filed.
8 BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES
for infringement. It is well established that the grant of a
license does not need to be in writing. See Waymark Corp.
v. Porta Sys. Corp., 334 F.3d 1358, 1364 (Fed. Cir. 2003)
(“Only assignments need be in writing under 35 U.S.C.
§ 261. Licenses may be oral.”); Rite-Hite Corp. v. Kelley
Co., 56 F.3d 1538, 1552 (Fed. Cir. 1995) (en banc) (holding
that to be an exclusive licensee a party may rely on either
an express or implied promise of exclusivity). In any
event, in 1997 there was a memorialized transfer of the
exclusive license from Goldfarb and Bard Inc. to BPV’s
predecessor. We agree with the district court that this
1997 agreement between the parties settles BPV’s right to
sue at the time of the complaint as Goldfarb’s exclusive
licensee. Bard III, at 19-20.
BPV and Goldfarb thus readily meet their burden to
establish standing. For Gore to prevail, it would have to
establish each of the following propositions: (1) the 1980
agreement that was styled as an “exclusive license”
between Goldfarb and Bard Inc. was in fact a virtual
assignment, and (2) Bard Inc.’s transfer of its rights to
BPV under the agreement failed because it was not in
writing. We see no error in the district court’s well-
reasoned analysis on the first point—inter alia, Goldfarb
retained significant reversionary rights, there was a field
of use restriction, and Goldfarb retained the right to share
in damages. See id. at 15. There was no basis, therefore,
to conclude that Goldfarb had transferred “all substantial
rights” to Bard. See Abbott Labs. v. Diamedix Corp., 47
F.3d 1128, 1132 (Fed. Cir. 1995) (finding that even limited
rights retained by the patentee made it a necessary party
in any subsequent infringement suit). But even if Gore
could get past those first shoals, it would founder at the
second. Gore argues that since Bard represents that it
transferred its entire interest in the 1980 agreement to
BPV, if that interest were a virtual assignment, then the
transfer would fail without a written agreement. But,
there is no question that in 1997, there was a written
BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES 9
agreement between the parties affirming Bard’s transfer
of its rights to BPV. Gore argues that our case law pre-
vents such a retroactive agreement—but for support of
this proposition, all Gore cites is precedent in which we
considered agreements that were executed after the suit
was filed, such as Mars, Inc. v. Coin Acceptors, Inc., 527
F.3d 1359 (Fed. Cir. 2008). Here, by contrast, the 1997
memorialization occurred years before the suit was filed.
The 1997 agreement was not a nunc pro tunc written
agreement that occurred after the complaint. Compare,
e.g., Abraxis Bioscience, Inc. v. Navinta LLC, 625 F.3d
1359, 1366-67 (Fed. Cir. 2010); Enzo APA & Son, Inc. v.
Geapag A.G., 134 F.3d 1090, 1093 (Fed. Cir. 1998). Ac-
cordingly, the plaintiffs had standing at the time of the
complaint, and the district court had jurisdiction pursu-
ant § 1338(a). We turn, then, to Gore’s appeal on the
merits.
III
To establish willful infringement, the patentee has
the burden of showing “by clear and convincing evidence
that the infringer acted despite an objectively high likeli-
hood that its actions constituted infringement of a valid
patent.” In re Seagate Tech., LLC, 497 F.3d 1360, 1371
(Fed. Cir. 2007) (en banc) cert denied 552 U.S. 1230
(2008). “The state of mind of the accused infringer is not
relevant to this objective inquiry.” Id. Only if the patent-
ee establishes this “threshold objective standard” does the
inquiry then move on to whether “this objectively-defined
risk (determined by the record developed in the infringe-
ment proceeding) was either known or so obvious that it
should have been known to the accused infringer.” Id.
While this second prong of Seagate may be an issue of
fact, the threshold determination of objective recklessness
requires “objective assessment” of the accused infringer’s
defenses. Bard II, 682 F.3d at 1006. In Bard II we held
that objective recklessness, even though “predicated on
underlying mixed questions of law and fact, is best decid-
10 BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES
ed by the judge as a question of law subject to de novo
review.” Id. at 1007. 3 Even when underlying factual
issues were sent to the jury in the first instance—such as
in this case—“the judge remains the final arbiter of
whether the defense was reasonable.” Id. at 1008 (em-
phasis added).
Accordingly, under Bard II, we review de novo the
district court’s determination whether Gore’s “position is
susceptible to a reasonable conclusion of no infringement.”
Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1310
(Fed. Cir. 2011). Objective recklessness will not be found
where the accused infringer has raised a “substantial
question” as to the validity or noninfringement of the
patent. Spine Solutions, Inc. v. Medtronic Sofamor Danek
USA, Inc., 620 F.3d 1305, 1319 (Fed. Cir. 2010); DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1336 (Fed. Cir. 2009).
On remand, the district court evaluated several de-
fenses raised by Gore and determined that none of them
were objectively reasonable. On appeal, Gore appeals
only its determination with respect to Gore’s inventorship
defense. This defense arises from the decades-long rec-
3 The district court’s opinion suggests that it reject-
ed Gore’s argument because “substantial evidence” was
contrary to a finding that Gore had a reasonable expecta-
tion of success in its defense. Bard III, at 11. Gore ar-
gues that this suggests that the district court
inappropriately relied on findings of fact in determining
the objective reasonableness of its defense. Gore’s posi-
tion overstates the significance of the district court’s
reference to “substantial evidence.” Rather, the district
court correctly followed Bard II, reviewing the facts in the
record produced in the litigation and evaluating whether,
on the basis of those facts, Gore had raised a reasonable
defense. See id. at 19.
BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES 11
ord, which includes parallel examination of Gore’s and
Goldfarb’s patent applications on vascular grafts made of
ePTFE, an interference declared in 1983 between the
applications, which we reviewed in Cooper I and Cooper
II, as well as the infringement proceedings in this case
that were finally resolved—except as to the issue of
willfulness—in Bard I. Gore’s argument is based on the
fact that its employee, Peter Cooper, supplied the particu-
lar ePTFE tubing that Goldfarb used in making his
successful vascular graft (the “2-73 RF” graft). In Gore’s
view, Cooper furnished to Goldfarb “the embodiment of
the invention before Goldfarb conceived the invention
using that embodiment.” Bard III, at 7.
As an initial matter, we reject Gore’s argument that
the mere fact a member of the previous panel dissented
on this issue indicates that its position was reasonable.
Gore does not point to any previous case in which we
followed this principle. To the contrary, in Paper Convert-
ing Machine Co. v. Magna-Graphics Corp., 785 F.2d 1013,
1016 (Fed. Cir. 1986), for example, we noted that despite
the existence of a dissenting opinion in a prior opinion
affirming infringement, the same panel could still affirm
willfulness in a later appeal. Otherwise, we would be
imposing a rule that any single judge’s dissent on the
merits could preclude the determination of willful in-
fringement.
Turning to the merits, Gore claimed that its employ-
ee, Peter Cooper, was a joint inventor of the ’135 patent.
Therefore, Gore argued that the patent is invalid for non-
joinder of Cooper as a co-inventor. Gore now argues that
even though it did not prevail, its argument was still
reasonable in light of the facts in the record and the law
of joint inventorship.
Issued patents are presumed to correctly name the
inventors; therefore, “[t]he burden of showing misjoinder
or nonjoinder of inventors is a heavy one and must be
12 BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES
proved by clear and convincing evidence.” Hess v. Ad-
vanced Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed.
Cir. 1997) (quoting Garrett Corp. v. United States, 190 Ct.
Cl. 858, 870 (1970)). By statute,
[i]nventors may apply for a patent jointly even
though (1) they did not physically work together
or at the same time, (2) each did not make the
same type or amount of contribution, or (3) each
did not make a contribution to the subject matter
of every claim of the patent.
35 U.S.C. § 116(a). “Because conception is the touchstone
of inventorship, each joint inventor must generally con-
tribute to the conception of the invention.” Ethicon, Inc.
v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir.
1998). Conception is precisely defined as existing “when a
definite and permanent idea of an operative invention,
including every feature of the subject matter sought to be
patented, is known.” Sewall v. Walters, 21 F.3d 411, 415
(Fed. Cir. 1994). In other words, conception is only com-
plete when the “idea is so clearly defined in the inventor’s
mind that only ordinary skill would be necessary to
reduce the invention to practice, without extensive re-
search or experimentation.” Burroughs Wellcome Co. v.
Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994).
As to the required degree of contribution to concep-
tion, we have recognized that “[t]he determination of
whether a person is a joint inventor is fact specific, and no
bright-line standard will suffice in every case.” Fina Oil
& Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir.
1997). The underlying principle from our case law is that
a joint inventor’s contribution must be “not insignificant
in quality, when that contribution is measured against
the dimension of the full invention.” Id. Of particular
relevance to this case, we have held that if an individual
supplies a component essential to an invention, that is an
insufficiently significant contribution if the component
BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES 13
and the principles of its use were known in the prior art.
Hess, 106 F.3d at 981; see also Pannu v. Iolab Corp., 155
F.3d 1344, 1351 (Fed. Cir. 1998) (explaining that a joint
inventor is required to “do more than merely explain to
the real inventors well-known concepts and/or the current
state of the art”). Moreover, while joint inventors need
not “physically” work together under § 116, “the statutory
word ‘jointly’ is not mere surplusage.” Kimberly-Clark
Corp. v. Procter & Gamble Distrib. Co., Inc., 973 F.2d 911,
917 (Fed. Cir. 1992). We require that “inventors have
some open line of communication during or in temporal
proximity to their inventive efforts.” Eli Lilly & Co. v.
Aradigm Corp., 376 F.3d 1352, 1359 (Fed. Cir. 2004).
Critically, “each inventor must contribute to the joint
arrival at a definite and permanent idea of the invention
as it will be used in practice.” Burroughs, 40 F.3d at 1229
(emphasis added); see also Vanderbilt Univ. v. ICOS
Corp., 601 F.3d 1297, 1308 (Fed. Cir. 2010) (“[C]o-
inventors must collaborate and work together to collec-
tively have a definite and permanent idea of the complete
invention.”).
In sum, the two questions for objectively assessing
Gore’s defense are (1) what constitutes the “definite and
permanent idea” of the invention at issue and (2) whether
Cooper and Goldfarb acted in concert to jointly arrive at
that idea. With respect to these questions, the factual
record and inferences from the record were raised in the
interference proceeding that preceded the issuance of the
’135 patent and this litigation—and were reviewed by this
court in Cooper I and Cooper II.
As to the first, we note that the invention at issue was
not merely the use of ePTFE in vascular grafts. Rather,
each claim of the ’135 patent includes, as its key limita-
tion, specified dimensions of fibril length that are essen-
tial for a successful graft. See Cooper II, 240 F.3d at 1380
(noting that the invention “relates to the fibril length of
certain material used for vascular grafts”). While Cooper
14 BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES
identified ePTFE as a promising material for vascular
grafts, many grafts that were made of ePTFE failed.
Cooper I, 154 F.3d at 1325. Prior to the invention, Cooper
and others in the art believed that pore size was the key
parameter for success. Id. at 1324. We affirmed the
Board’s finding that prior to Cooper’s providing the lot of
ePTFE tubes that ultimately led to the successful 2-73 RF
graft, “he had not yet recognized the importance of the
fibril length required by the interference, i.e., he had not
yet conceived the invention, and he was not aware of the
fibril lengths of the material he was sending to Goldfarb.”
Cooper II, 240 F.3d at 1381. What Cooper told Goldfarb
was, more generally, that “he expected the material to be
suitable as a vascular graft.” Id. at 1384. In other words,
Cooper “had not conceived the fibril length limitation
before he sent the material to Goldfarb.” Id. at 1385.
To be sure, in those prior appeals we held that Cooper
“had conceived of the invention, including the fibril length
limitation” before Goldfarb evaluated the 2-73 RF graft
and reduced the invention to practice. Id. at 1384-85
(citing Cooper I, 154 F.3d at 1326). However, we agree
with the district court that the record—established in
proceedings prior to the litigation—shows that Cooper
had “minimal contact” with Goldfarb on the subject of the
fibril length limitation:
Indeed, Cooper admits that, even after he con-
ceived the importance of fibril length, he did not
convey that information to Goldfarb. He also ad-
mits that he did not ask Goldfarb to use grafts
with fibril lengths required by the interference
count, or to determine the fibril lengths of success-
ful grafts. While Cooper was not required to
communicate his conception to Goldfarb, Cooper I,
154 F.3d at 1332, 47 USPQ2d at 1905, his failure
to convey any information or requests regarding
fibril length prevents Goldfarb’s determination of
BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES 15
the fibril lengths of the material from inuring to
his benefit.
Bard III, at 9 (quoting Cooper II, 240 F.3d at 1385).
Based on the record established in Cooper I and II—that
we reviewed—Cooper and Goldfarb independently con-
ceived of the fibril length limitation. While Cooper I and
II concerned inurement in the context of interference,
they established that—barring Gore’s introduction of new
evidence or theories—Cooper and Goldfarb did not collab-
orate, communicate, nor in any way jointly arrive at the
recognition that fibril length was significant for graft
success. Even if Cooper had achieved conception prior to
Goldfarb, Cooper II definitively held that Goldfarb arrived
at conception on his own, and, thus, his reduction to
practice did not inure to Cooper. 240 F.3d at 1386.
This is an unusual case. Forty years have passed
since Goldfarb filed for the patent at issue in this case.
Gore tried to get a patent on the subject matter of the
patent on which it was sued. The subsequent decades of
prior proceedings shaped what defenses Gore could raise
once it was sued for infringement. Once it failed and the
’135 patent issued, Gore was left with an exceptionally
circumscribed scope of reasonable defense.
In the current proceedings, Gore relied on those facts
which showed that the invention was based on a material
that Gore invented and that Cooper may have conceived
of the invention prior to Goldfarb (though Goldfarb won
the patent because he was the first to reduce it to prac-
tice). But even if it could have persuaded a jury—which it
did not—Gore could not have evaded the legal require-
ments of joint inventorship. Ultimately, to have stood a
reasonable chance of prevailing on this issue, Gore needed
to raise new evidence or theories that were not considered
in Cooper I and II. However, as the prior panel noted,
“Gore’s argument remains unchanged and there is still no
evidence that Cooper either recognized or appreciated the
16 BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES
critical nature of the internodal distance and communi-
cated that key requirement to Goldfarb before Goldfarb
reduced the invention to practice.” Bard I, 670 F.3d at
1182. 4 Within the backdrop of the extensive proceedings
prior to this litigation, therefore, we agree with the dis-
trict court that Gore’s position was not susceptible to a
reasonable conclusion that the patent was invalid on
inventorship grounds.
IV
For the aforementioned reasons, we affirm the district
court’s determination that the plaintiffs established
standing and that the ’135 patent was willfully infringed.
AFFIRMED
4 Indeed, if anything, the evidence presented in the
litigation further bolstered the plaintiffs’ position. For
example, as the district court noted, shortly after Gold-
farb filed his patent application in October 1974, Cooper
admitted to entering Goldfarb’s laboratory without per-
mission and took his histological slides. Bard III, at 10.
Other evidence suggested that Cooper did so because
Cooper still did not understand what parameters mat-
tered for successful grafts. Id. at 10-11.
 United States Court of Appeals
for the Federal Circuit
______________________
BARD PERIPHERAL VASCULAR, INC., AND
DAVID GOLDFARB, M.D.,
Plaintiffs-Appellees,
AND
C.R. BARD, INC.,
Counterclaim Defendant-Appellee,
v.
W.L. GORE & ASSOCIATES, INC.,
Defendant-Appellant.
______________________
2014-1114
______________________
Appeal from the United States District Court for the
District of Arizona in No. 2:03-CV-00597-MHM, Judge
Mary H. Murguia.
______________________
HUGHES, Circuit Judge, concurring.
I agree that when reviewed de novo, the evidence in
this case shows that Gore’s defenses were not objectively
reasonable. I write separately to reiterate my belief that
the full court should review our willfulness jurisprudence
in light of the Supreme Court’s recent decisions in High-
mark Inc. v. Allcare Health Management Sys., Inc., 134
2 BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES
S. Ct. 1744 (2014) and Octane Fitness, LLC v. ICON
Health & Fitness, Inc., 134 S. Ct. 1749 (2014). Those
decisions call into question our two-part test for determin-
ing willfulness, In Re Seagate Tech., LLC, 497 F.3d 1360
(2007) (en banc), and our de novo standard for reviewing
the district court’s willfulness determination, Bard
Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 682
F.3d 1003, 1006–07 (Fed. Cir. 2012) (Bard II). See Halo
Elecs., Inc. v. Pulse Elecs., Inc., 769 F.3d 1371, 1383 (Fed.
Cir. 2014) (O’Malley, J., concurring).
This case demonstrates why de novo review of willful-
ness is problematic. The panel is divided over the
strength of Gore’s joint inventorship defense. Each side
advances a sound argument about whether the evidence
in this case raises a “substantial question” of joint inven-
torship. And the district court, likewise, provided a
thorough and well-reasoned opinion. If one of these
several reasonable opinions must ultimately govern, it
should be the opinion of the district judge, whose assess-
ment of litigation positions is informed by trial experience
and who has “lived with the case over a prolonged period
of time.” Highmark, 134 S. Ct. at 1748.
A more deferential standard of review would be con-
sistent with the standards for reviewing mixed questions
of law and fact in other contexts. See, e.g., Highmark, 134
S. Ct. at 1748–49 (holding abuse of discretion is the
proper standard for reviewing award of attorney fees in
patent cases, “[a]lthough questions of law may in some
cases be relevant . . . .”); Pierce v. Underwood, 487 U.S.
552, 558 (1988) (holding abuse of discretion is the proper
standard for reviewing determinations of whether a
litigant’s position is “substantially justified” for purposes
of fee-shifting under the Equal Access to Justice Act,
although the determination frequently turns on a purely
legal issue). It would also be consistent with the standard
for reviewing a finding of willful copyright infringement.
See Dolman v. Agee, 157 F.3d 708, 715 (9th Cir. 1998)
BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES 3
(“The district court’s finding of willful [copyright] in-
fringement is reviewed for clear error.”).
United States Court of Appeals
for the Federal Circuit
______________________
BARD PERIPHERAL VASCULAR, INC., AND
DAVID GOLDFARB, M.D.,
Plaintiffs-Appellees,
AND
C.R. BARD, INC.,
Counterclaim Defendant-Appellee,
v.
W.L. GORE & ASSOCIATES, INC.,
Defendant-Appellant.
______________________
2014-1114
______________________
Appeal from the United States District Court for the
District of Arizona in No. 2:03-cv-00597-MHM, Judge
Mary H. Murguia.
______________________
NEWMAN, Circuit Judge, dissenting.
This case returns to the Federal Circuit on appeal of a
district court decision on remand from an en banc decision
of this court. The issue is willful infringement and its
consequences, which this en banc court remanded for de
novo determination as a matter of law, vacating the
judgment entered on the jury verdict.
2 BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES
The en banc court changed the standard and proce-
dure for determination of willful infringement and its
consequences in order to bring reasonable national uni-
formity to application of this penalty. The court held that
the objective reasonableness of a defense to infringement
is a legal question to be determined by the judge, and is
decided de novo on appeal. The court held that willful
infringement is not a jury question, and vacated the
judgment of willful infringement and punitive damages
that the district court had entered on the jury verdict.
On remand, the district court re-entered its prior
judgment in its entirety, reciting the evidence that in its
view supported the judgment. Again here on appeal, my
colleagues on this panel repeat the district court’s exer-
cise, do not apply de novo standards of review, and do not
apply the clear precedent which requires determination of
whether Gore acted with “objective recklessness” In re
Seagate Techs., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007)
(en banc). Nor do my colleagues attempt to meet the
court’s responsibility to impart reasonable consistency
and objective standards to the penalty aspect of “willful”
activity, although this was the reason why the en banc
court established a system of de novo determination of
this question of law applied to the facts of the particular
case.
Precedent establishes that the objective prong of will-
ful infringement “tends not to be met where an accused
infringer relies on a reasonable defense to a charge of
infringement.” Spine Solutions, Inc. v. Medtronic So-
famor Danek USA, Inc., 620 F.3d 1305, 1319–20 (Fed. Cir.
2010). When there is a “substantial question of invalidity
or unenforceability” of the patent, willful infringement
cannot arise, as a matter of law. Seagate, 497 F.3d at
1371. The panel majority does not review the evidence
and apply the law objectively; the court merely searches
for and recites adverse evidence.
BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES 3
The majority ignores that Gore’s employee Cooper
was the first to conceive of the invention – by final ruling
of the patent interference tribunal and this court; the
majority ignores that the ’135 patent was pending for
twenty-eight years, while Gore developed this Gore-Tex®
prosthetic product; the majority ignores that the district
court refused to enjoin Gore’s provision of these prosthetic
products after this litigation, citing the “potentially devas-
tating public health consequences” 1; the court does not
mention the inequitable conduct that pervades Dr. Gold-
farb’s actions in obtaining the patent, including confessed
perjury of a key witness; the court does not mention the
action for misappropriation of Gore’s trade secrets by
Gore ex-employees who now testify against Gore; the
court does not mention the solid support for the theory
that there is at least joint invention.
I start with the history of this conflict, for it is rele-
vant to both willful infringement and the award of puni-
tive damages.
I. The Interference
The saga of Bard versus Gore started forty-one years
ago, when Gore’s employee Peter Cooper, manager of the
Gore plant in Flagstaff, Arizona, invited Dr. David Gold-
farb at the Arizona Heart Institute to participate in an
ongoing study of Gore’s product, expanded polytetrafluo-
roethylene (“ePTFE”), for use as a vascular prosthesis,
i.e., as a graft to repair and replace blood vessels.
Gore’s ePTFE polymer, (brand name Gore-Tex®), has
unique properties based on its microporous and fibrous
structure, as well as the adaptability of that structure to
various uses. Gore employees sought to develop new
1 Bard Peripheral Vascular, Inc. v. W.L. Gore & As-
socs., Inc., No. 03-CV-0579-PHX-MHM, 2009 WL 920300,
at *5 (D. Ariz. March 31, 2009).
4 BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES
applications for ePTFE, and continued to modify its
structure in studying new uses. Beginning around 1970,
Peter Cooper led the development of ePTFE vascular
prosthetic grafts.
Cooper and other Gore employees collaborated with
vascular surgeons in the United States and Japan, who
surgically inserted Gore’s ePTFE vascular tubes of vary-
ing porous and fibrous structure into the arteries of dogs
and sheep. Compatibility of ePTFE with human tissue
and its effectiveness as mammalian grafts were demon-
strated. In addition to scientific publications and the PTO
interference record, details of this history may be found in
this court’s opinions in the interference appeals, reported
at Cooper v. Goldfarb, 154 F.3d 1321 (Fed. Cir. 1998)
(“Cooper I”) and Cooper v. Goldfarb, 240 F.3d 1378 (Fed.
Cir. 2001) (“Cooper II”).
In 1973 Cooper, along with Gore employee Richard
Mendenhall, contacted Dr. Goldfarb, who had recently
arrived at the Arizona Heart Institute, and invited him to
participate in the ePTFE vascular study. Cooper gave Dr.
Goldfarb the reports of surgeons who had previously
evaluated ePTFE tubes as vascular grafts, and gave him
samples of the most effective ePTFE tubes based on the
prior evaluations. A letter from Cooper to Dr. Goldfarb
accompanying these samples stated that they “represent
the latest attempt to achieve satisfactory patency rates in
small artery prosthetics.” Cooper II, 240 F.3d at 1384.
Dr. Goldfarb tested the Gore samples by inserting
them in blood vessels of dogs and inspecting their struc-
ture by microscope. On October 24, 1974 Dr. Goldfarb
filed a patent application on the structure of the most
effective of the samples he tested. Cooper had previously
filed a patent application covering the same structure,
and the PTO declared an interference between the Cooper
and Goldfarb applications.
BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES 5
In its interference decision, the PTO held that Cooper
was the first to conceive the subject matter of the inter-
ference count, ruling that Cooper “had conceived all the
limitations of the count” and “had established conception
as of June 5, 1973.” Cooper I, 154 F.3d at 1328. However,
the PTO also held that Goldfarb was the first to reduce
the count to practice, declining to credit Cooper with the
prior reductions to practice by the surgeons to whom
Cooper had previously provided ePTFE tubes and grafts
for testing and evaluation. Although the record contains
extensive evidence of these tests, reports, and continued
collaboration, the PTO tribunal also did not permit
Cooper to show diligence to his filing date, on the ground
that diligence had not been pleaded in the interference.
Thus the PTO awarded priority to Goldfarb.
On appeal, this court affirmed the PTO ruling that
Cooper was the first to conceive the subject matter of the
count. This court found error in the PTO’s refusal to
consider whether Goldfarb’s work “inured” to Cooper’s
benefit. The PTO had stated that the issue of inurement
had not been raised at final hearing, but this court found
that inurement had been raised “in several places in the
final hearing brief,” Cooper I, 154 F.3d at 1332, and
remanded to the PTO to consider inurement. On remand
the PTO held that Goldfarb’s work did not inure to
Cooper’s benefit, relying on affidavits of a Gore employee,
Dan Detton, who later admitted to perjury. 2 Cooper II,
240 F.3d at 1380–81.
2 Counsel: Is your testimony there knowingly false
or truthful?
Mr. Detton: No, that was inaccurate testimony.
Counsel: Was it knowingly false?
Mr. Detton: Yes, it was.
Counsel: Perjury?
Mr. Detton: Yes, it was.
6 BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES
The PTO awarded the patent to Dr. Goldfarb, and
U.S. Patent No. 6,436,135 (“the ’135 patent”) issued on
August 20, 2002. Meanwhile, during the twenty-eight
years of patent pendency, Gore developed ePTFE grafts
for a variety of prosthetic uses, and achieved medical and
commercial success.
II. The Infringement Litigation
On March 28, 2003, Dr. Goldfarb and exclusive licen-
see Bard sued Gore for infringement of the ’135 patent.
Although Gore attempted to raise several defenses of
invalidity and enforceability, at trial and by motion, the
district court and the jury were told repeatedly that the
Federal Circuit had finally adjudged that Dr. Goldfarb
was entitled to the patent.
The jury rendered a verdict of willful infringement,
and assessed damages measured as Bard’s lost profits on
Gore’s products for which Bard had a competing product.
The jury also awarded a royalty to Bard at rates ranging
from 10% to 18%, for Gore sales of ePTFE products for
which there was no competing Bard product. These
damages totaled $185,589,871.02. Then, based on the
jury’s finding of willful infringement, the district court
doubled the damages, and awarded Goldfarb and Bard
their attorneys’ fees and costs. Bard Peripheral Vascular,
Inc. v. W.L. Gore & Assocs., Inc., 586 F. Supp. 2d 1083 (D.
Ariz. 2010) (“Bard I”). A split panel of the court affirmed.
Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs.,
Inc., 670 F.3d 1171 (Fed. Cir. 2012) (“Bard II”). Gore
requested rehearing.
Trans. 1915:5–15, Bard Peripheral Vascular, Inc. v.
W.L. Gore & Assocs., Inc., No. 03-CV-0579-PHX-MHM, (D.
Ariz. Nov. 27, 2007), ECF No. 787.
BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES 7
III. Rehearing en banc
The Federal Circuit granted rehearing en banc on the
issue of willful infringement and the award of punitive
damages and attorneys’ fees. The en banc court vacated
these district court rulings, stating that “the opinion of
the court accompanying the judgment is modified, in
accordance with the panel opinion accompanying this
order.” Bard Peripheral Vascular, Inc. v. W.L. Gore &
Assocs., Inc., 476 Fed. App’x 747, 748 (Fed. Cir. 2012) (en
banc) (“Bard III”). The court cited the need for consisten-
cy and reasonable predictability in resolving the pervasive
issue of willful infringement, and ruled that willful in-
fringement is “a question of law based on underlying
mixed questions of law and fact and is subject to de novo
review,” Bard Peripheral Vascular, Inc. v. W.L. Gore &
Assocs., Inc., 682 F.3d 1003, 1005 (Fed. Cir. 2012) (“Bard
IV”).
The court remanded for de novo determination of will-
ful infringement. The court explained that willful in-
fringement contains objective and subjective components,
and that the objective component requires proof of objec-
tive recklessness in the face of a high likelihood of infring-
ing a patent known to be valid. Bard IV, 682 F.3d at
1006. This objective component receives de novo review,
as a matter of law.
The objective prong of willful infringement is not met
when there is a reasonable defense to the charge of in-
fringement. Spine Solutions, 620 F.3d at 1120; see also
Halo Elecs., Inc. v. Pulse Elecs., Inc., 769 F.3d 1371, 1382
(Fed. Cir. 2014); Advanced Fiber Techs. (AFT) Trust v. J
& L Fiber Servs., Inc., 674 F.3d 1365, 1377 (Fed. Cir.
2012). Then, if a district court holds the objective defens-
es to be objectively unreasonable, the jury’s subjective
findings can be reviewed. Bard IV, 682 F.3d at 1008.
After clarifying the legal principles, this court re-
manded to the district court for redetermination of willful
8 BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES
infringement. The district court reviewed the issues and
reinstated its prior judgment of willful infringement,
double damages, and attorneys’ fees. The district court
stated that the evidence supported the prior judgment.
Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs.,
Inc., No. 03-0597, 2013 WL 5670909 (D. Ariz. Oct. 17,
2013) (“Bard V”). Today’s majority now affirms.
IV. This Appeal
The panel majority, while mentioning that willful in-
fringement is now a matter of law, does not undertake the
required de novo review. Determination of a matter of
law requires consideration of the positions of both sides,
with due attention to the burdens and standards of proof.
As stated in Seagate Techs., a ruling of willful infringe-
ment requires objective recklessness in the face of a high
likelihood of infringing a patent known to be valid and
enforceable.
The question for the reviewing court is not whether
the district court’s decision of law can be found supported
by substantial evidence. The question of willful infringe-
ment is whether the accused infringer raised a substan-
tial question of invalidity or unenforceability regarding
the ’135 patent. In re Seagate, 497 F.3d at 1371. Willful
infringement cannot lie “when a reasonable defense is
raised,” Advanced Fiber, 674 F.3d at 1377, “[although] the
record contains substantial evidence to support the jury's
implicit finding” of validity and enforceability. Spine
Solutions, 620 F.3d at 1319. The required showing of
objective recklessness is not met, as a matter of law, when
the patent is reasonably subject to challenge.
It cannot be disputed that Gore raised several sub-
stantial questions challenging the validity and enforcea-
bility of the ’135 patent. I have previously outlined some
of the grounds on which the ’135 patent was vulnerable:
BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES 9
(1) the ruling of the Patent and Trademark Of-
fice, affirmed by the Federal Circuit, that Gore's
employee Cooper was the first to conceive of the
invention that was patented by Goldfarb; (2) the
fact that Cooper provided Goldfarb with the Gore–
Tex® tubes that Goldfarb patented; (3) the fact
that Goldfarb tested the tubes in dogs at Cooper's
request; (4) the fact that others had previously
tested the Gore–Tex® tubes in dogs and sheep,
and had reported and published the same results
that Goldfarb later patented; (5) the fact that the
Goldfarb application was pending for 28 years,
leaving doubt as to the outcome in the Patent Of-
fice. It is not irrelevant that the eventual allow-
ance of the Goldfarb application included the
admitted perjured affidavit of Detton, an affidavit
that Detton asked Goldfarb to withdraw, and was
refused.
Bard III, 682 F.3d at 1009 (Newman, J., dissenting in
part). These are all substantial questions of validity and
enforceability of the ’135 patent, weighing against reck-
less disregard.
Gore also presented by motion seven grounds of unen-
forceability of the ’135 patent, quoted by the district court
as follows:
1. Plaintiffs and their attorneys failed to ad-
vise the Patent Office of Dr. Volder’s connections
with Impra in his 1976 affidavit in which he ex-
pressed his opinion on the issue of obviousness as
a presumably impartial person skilled in the art.
2. Plaintiffs and their attorneys failed to ad-
vise the Patent Office at any time prior to with-
drawal of the rejection of Claims 1 to 10 of the
Goldfarb patent application, that in 1978 Lenox
Baker, M.D., withdrew and repudiated paragraph
6 of his 1976 affidavit filed with the Patent Office.
10 BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES
3. The filing of and reliance on two 1976 affi-
davits from D. Dan Detton, notwithstanding Mr.
Detton’s repudiation of those affidavits before
they were filed, and Plaintiffs’ subsequent failure
to advise the Patent Office of Mr. Detton’s 1978
repudiation of his 1976 affidavits.
4. Plaintiffs’ reliance on an error that the Pa-
tent Office made in connection with the Matsumo-
to publication in Surgery, in which the Patent
Office Examiner mistakenly interpreted the wall
thickness in that publication to be 1 millimeter
(“mm”) rather than 0.5 mm.
5. Plaintiffs and their attorneys failed to pro-
vide information to the Patent Office about Dr.
Volder’s work and his possible role as an inventor
or co-inventor, including the failure to disclose the
existence of and the subsequent destruction of the
Volder notebook.
6. Plaintiffs and their attorneys failed to com-
ply with the Patent Office order requiring produc-
tion of material information from the Goldfarb v.
Impra litigation.
7. Plaintiffs and their attorneys failed to ad-
vise the Patent Office Examiner of the existence of
the Gore shipping log, which contained infor-
mation about prior art vascular graft wall thick-
nesses that was inconsistent with the 1976
affidavits of Harold Green and Mr. Detton, and
inconsistent with the argument made by Dr. Gold-
farb and Mr. Sutton in persuading the Patent Of-
fice Examiner to withdraw the November 1975
rejection of Claims 1 to 10.
Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs.,
Inc., 573 F. Supp. 2d 1170, 1173–74 (D. Ariz. 2008).
BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES 11
Each asserted ground of inequitable conduct was
summarily dismissed by the district court, which stated
that, even if Dr. Goldfarb misrepresented or intentionally
withheld information from the PTO and despite the
admitted perjury, the false information was “not material
to the prosecution of the ’135 patent.” Id. at 1215. That
reasoning cannot be sustained.
In addition, Gore’s argument of incorrect inventor-
ship, or at least joint invention, is quite viable, and raises
a substantial question of validity, which requires correct
inventorship. Given the PTO’s findings that Cooper was
the first to conceive the invention, and this court’s prior
affirmance that Cooper conceived of the invention includ-
ing the fibril length limitation before Goldfarb evaluated
the 2-73 RF graft, see Cooper II, 240 F.3d at 1384–85
(citing Cooper I, 154 F.3d at 1326), Goldfarb’s reduction to
practice of the material that Cooper made and presented
for patenting, at least raises a substantial question of
“joint inventorship.” The statute is clear, and surely
presents enough of a question that joint invention could
be reasonably raised in defense:
Joint Inventors -- . . . Inventors may apply for a
patent jointly even though (1) they did not physi-
cally work together or at the same time, (2) each
did not make the same type or amount of contri-
bution, or (3) each did not make a contribution to
the subject matter of every claim of the patent.
35 U.S.C. §116(a) (2012).
The panel majority rules that Gore’s joint invention
defense fails because Gore cannot show “collaboration”
between Cooper and Goldfarb as to every limitation in the
claims. Joint invention does not require collaboration as
to every limitation, as the statute makes clear. Moreover,
when the PTO’s interference procedures are removed from
the deferential review status they enjoyed in Cooper I and
12 BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES
Cooper II, the correctness of these rulings can reasonably
be challenged in the infringement context.
In all events, the question as it relates to willfulness
is whether the defense of invalidity could reasonably be
raised, not whether it eventually succeeded. The flaws in
the Goldfarb patent and the way it was obtained provided
sufficiently reasonable defenses to both validity and
enforceability. On the entirety of the premises and apply-
ing the correct legal standards, the judgment of willful
infringement cannot stand.
V. Damages
Even when willful infringement is found, it does not
follow that punitive damages must be imposed, or that
the damages must be doubled. The public benefit of
Gore’s product cannot be ignored. Punitive damages are
intended to discourage bad behavior, not life-saving
medical devices. This en banc court specifically asked for
review of the damages award as related to the willfulness
determination. Such review gets short shrift from my
colleagues, who simply ignore the en banc court’s admoni-
tion that the premises and consequences of “willful” action
receive objective, nationally consistent, implementation.
“Precedent holds that a finding of willfulness author-
izes, but does not require, enhanced damages.” Laitram
Corp. v. NEC Corp, 115 F.3d 947, 955 (Fed. Cir. 1997));
Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d
1555, 1582 (Fed. Cir. 1992) (refusal to enhance damages
despite the jury’s verdict of willful infringement); Modine
Mfg. Co. v. Allen Group, Inc., 917 F.2d 538, 543 (Fed. Cir.
1990) (same); Delta–X v. Baker Hughes Prod. Tools, Inc.,
410, 413 (Fed. Cir. 1993) (considering whether the de-
fendant made a substantial challenge to infringement).
Extensive precedent supports judicial refusal to en-
hance damages when the case is close and the equities
counsel moderation, not punishment. The award of
BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES 13
punitive damages depends on both the infringer’s degree
of culpability, and the injury that the infringement im-
posed on the patentee. Bard was awarded full recovery
for its loss of business to the Gore product. The district
court stated that “the Court is satisfied that a fair and full
amount of compensatory money damages, when combined
with a progressive compulsory license, will adequately
compensate Plaintiffs’ injuries, such that the harsh and
extraordinary remedy of injunction–with its potentially
devastating public health consequences—can be avoided.”
Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs.,
Inc., No. 03-CV-0597, 2009 WL 920300, at *5 (D. Ariz.
Mar. 31, 2009).
The district court’s recognition of the public’s interest
and medical benefits imparted by Gore’s product, and the
court’s refusal to enjoin its provision, cannot be reconciled
with the punitive doubling of damages. There was no
showing, or even a charge, of intentional harm, as re-
quired for severe punishment as here meted out. See
Restatement (Second) of Torts §500 (1965).
Thus, regardless of whether willfulness was a sup-
portable ruling, the doubling of the damages award is
untenable. From my colleagues’ contrary ruling, I re-
spectfully dissent.