November 2, 2012

Gore Asks Supreme Court to Review Joint Inventorship Standard

Thumbnail image for Thumbnail image for Supreme Court.jpgOn October 12, 2012, W.L. Gore & Associates Inc. ("Gore") filed a petition for writ of certiorari with the U.S. Supreme Court, asking the High Court to review the Federal Circuit's denial of joint-inventor status to one of Gore's engineers. The patent-in-suit, U.S. Patent No. 6,436,135 ("the '135 patent") lists Dr. David Goldfarb ("Goldfarb") as the sole inventor (Bard is the assignee.), and Gore argues that Peter Cooper ("Cooper"), head of Gore's vascular prosthetic research program, should be listed as a joint inventor. Gore alleges that the Federal Circuit erred in setting forth a new standard for joint inventorship that directly conflicts with legislative intent and the plain text of the Patent Act.

In the district court, the jury held that Gore willfully infringed Bard's patent, and the judge doubled the jury's damage award, granting $371 million to Bard. The Federal Circuit affirmed the district court's decision in February 2012, and Gore filed a combined petition for panel rehearing and rehearing en banc. In June 2012, the Federal Circuit granted the motion for rehearing en banc, "for the limited purpose of authorizing the panel to revise the portion of its opinion addressing willfulness." Gore then filed the instant petition.

In the petition, Gore alleges that in 1971, it began a research program focused on the use of stretched Teflon® ("Gore-Tex®") in vascular prosthetics, or artificial blood vessels. Gore created implantable vessels with varying features, and hired doctors to implant the vessels and to report which ones were successful. Cooper then started an additional experiment involving the porousity of the tubes. Cooper sent small, medium, and large-pore tubes to the physicians, and the results showed that the large-pore tubes (which had a greater "internodal" distance" or "fibril length") were the winners. Based on this, Cooper conceived of the instant invention on May 1, 1973.

In February 1973, Goldfarb joined Cooper's project and began testing the Gore-Tex® tubes. In June-July of 1973, Goldfarb recognized the importance of fibril length (Gore asserts that Cooper had previously recognized this feature.). Cooper and Goldfarb both filed patent applications in 1974, and the U.S. Patent and Trademark Office declared an interference proceeding. The Board held that while Cooper conceived first, he failed to reduce his invention to practice before Goldfarb, and the Board granted priority to Goldfarb. After pending for 28 years, the '135 patent granted in 2002, listing Goldfarb as the sole inventor (assigned to Bard). Bard then sued Gore for infringement of the '135 patent.

Gore filed a Judgment as a Matter Of Law ("JMOL") regarding invalidity for improper inventorship , and the district court held that Gore failed to show evidence to support the JMOL, and it was denied. The Court noted that in the appeal from the interference, the Federal Circuit held that Cooper had not conceived of the invention before he sent the tubes to Goldfarb, and Cooper never communicated conception or information related to internodal distance to Goldfarb.

On appeal, the Federal Circuit held that Bard presented evidence for the jury to find that Cooper was not a joint inventor because "Cooper did not communicate to Goldfarb that the internodal distance was the key to creating successful grafts, and, therefore, the jury could have reasonably concluded that Cooper's collaboration with Goldfarb did not contribute to the conception of the invention in a significant manner."

The Federal Circuit has held that in order to receive joint-inventor status, a person must: (1) contribute in a significant manner to the conception or reduction to practice of the invention, (2) make a significant contribution to the claimed invention, and (3) do more than merely explain well-known concepts and/or the current state of the art. Here, the Federal Circuit noted that "there is still no evidence that Cooper either recognized or appreciated the critical nature of the internodal distance and communicated that key requirement to Goldfarb before Goldfarb reduced the invention to practice." Gore argues that Cooper had in fact recognized the importance of fibril length prior to sending the tubes to Goldfarb, and that the Federal Circuit is imposing a communication requirement to meet the significant contribution standard to qualify as a joint inventor. Gore further asserts that this requirement directly conflicts with the language of 35 U.S.C. § 116, which states that inventors can apply for a patent jointly even though "each did not make the same type or amount of contribution."

The final outcome of this case not only will have a huge impact on the two companies involved, but also for research collaborations in general. In the meantime, researchers working on joint projects will likely proceed with a lot more caution not knowing whether their efforts are significant enough to qualify them as a joint inventor, or whether they can possibly infringe the product that they think that they are helping to create.