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14 January 2015Americas

Federal Circuit resolves fight over 40-year-old patent application

The US Court of Appeals for the Federal Circuit has affirmed a lower court’s decision that manufacturer W L Gore & Associates infringed a patent owned by medical device maker Bard Peripheral Vascular (BPV), bringing to an end a dispute that stems from more than 40 years ago.

In a 2-1 decision on Tuesday (January 13), the court agreed with the US District Court for the District of Arizona that Gore willfully infringed a BPV patent covering blood vessel grafts.

The judgment means that Gore must now pay BPV more than $1 billion in damages.

BPV had sued Gore in 2003. The case centred on US patent 6,436,135 (‘135), which covers prosthetic vascular grafts. The grafts are made of highly-expanded polytetrafluoroethylene, or ePTFE, a material marketed by Gore under the trade name Gore-Tex.

The inventor of the grafts, David Goldfarb, filed for a patent covering the devices in 1974. He only received it in 2002 after a long dispute with the US Patent and Trademark Office.

In 1980, Goldfarb entered into licensing agreement with BPV’s parent company, Bard, which transferred its interest in the agreement to BPV 16 years later.

Following a district court ruling against Gore, the company later argued that because there was no evidence of the transfer of interest to BPV, it did not acquire standing to sue for infringement.

Gore added that because Goldfarb “virtually” assigned his rights to Bard, and the company then did not “properly” transfer its rights to BPV, they both lacked standing. Gore sought to have the case dismissed for lack of jurisdiction.

At the Federal Circuit, judges Sharon Prost and Todd Hughes disagreed, however, finding that the plaintiffs established standing and that the ‘135 patent was willfully infringed by Gore.

However, Hughes said that the court must review its willfulness jurisprudence in light of the Supreme Court’s recent decisions in Highmark v Allcare and Octane v Icon.

“This case demonstrates why de novo review of willfulness is problematic,” he wrote. “The panel is divided over the strength of Gore’s joint inventorship defence. Each side advances a sound argument about whether the evidence in this case raises a ‘substantial question’ of joint inventorship.”

He continued: “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 assessment of litigation positions is informed by trial experience and who has ‘lived with the case over a prolonged period of time.’”

Dissenting judge Pauline Newman took issue with the $1 billion damages award: “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,” she wrote.

Bard was originally awarded $185 million in damages by the district court, although subsequent amounts were added to this sum.

“There was no showing, or even a charge, of intentional harm, as required for severe punishment as here meted out.”

In 2013, Laura Masurovsky, partner at law firm Finnegan, Henderson, Farabow, Garrett & Dunner, told LSIPR that it was possibly the longest running case in the Federal Circuit’s history.

A spokesperson for Gore said the company was disappointed with the decision. She added: "We have been prepared for this possibility, and our business activities will continue without disruption. We remain committed to providing products to the market that improve health and save lives."

Bard could not be contacted for comment.

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6 October 2015   The US Supreme Court has declined to hear manufacturer W L Gore & Associates’s request for clarity on whether US patent law stipulates that patent licensing agreements must be placed in writing.

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Americas
6 October 2015   The US Supreme Court has declined to hear manufacturer W L Gore & Associates’s request for clarity on whether US patent law stipulates that patent licensing agreements must be placed in writing.

More on this story

Americas
6 October 2015   The US Supreme Court has declined to hear manufacturer W L Gore & Associates’s request for clarity on whether US patent law stipulates that patent licensing agreements must be placed in writing.