Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc.

United States Court of Appeals
for the Federal Circuit
__________________________

BARD PERIPHERAL VASCULAR, INC.
AND DAVID GOLDFARB, M.D.,
Plaintiffs/Counterclaim
Defendants-Appellees,
AND

C.R. BARD, INC.,
Counterclaim Defendant-Appellee,
v.
W.L. GORE & ASSOCIATES, INC.,
Defendant/Counterclaimant-Appellant.
__________________________

2010-1510
__________________________

Appeal from the United States District Court for the
District of Arizona in case no. 03-CV-0597, Judge Mary H.
Murguia.
_________________________

Decided: February 10, 2012
_________________________

STEVEN C. CHERNY, Kirkland & Ellis, LLP, of New
York, New York, argued for the plaintiffs/counterclaim
defendants-appellees and counterclaim defendant-
appellee. With him on the brief were JOHN C. O’QUINN,
NATHAN S. MAMMEN and WILLIAM H. BURGESS, of Wash-
BARD PERIPHERAL v. WL GORE 2

ington, DC. Of counsel on the brief were GREGORY G.
GARRE and MAXIMILIAN A. GRANT, Latham & Watkins
LLP, of Washington, DC; ANDREW M. FEDERHAR, Fen-
nemore Craig P.C., of Phoenix, of Arizona; and JOHN L.
STRAND, Wolf, Greenfield & Sacks, P.C., of Boston, Mas-
sachusetts. Of counsel was AMANDA HOLLIS, Kirkland &
Ellis LLP, of Chicago, Illinois.

RICHARD G. TARANTO, Farr & Taranto, of Washington,
DC, argued for the defendant/counterclaimant-appellant.
Of counsel on the brief were DAVID H. PFEFFER, HARRY C.
MARCUS, JAMES W. GOULD, STEVEN M. PURDY and JOSEPH
A. FARCO., Locke, Lord, Bissell & Liddell, LLP, of New
York, New York; MATTHEW K. BLACKBURN, of San Fran-
cisco, California; and WILLIAM J. MALEDON, Osborn Male-
don, P.A., of Phoenix, Arizona; JOHN S. CAMPBELL, W.L.
Gore & Associates, Inc., of Newark, Delaware.
__________________________

Before NEWMAN, GAJARSA, * and LINN, Circuit Judges.
Opinion for the court filed by Circuit Judge GAJARSA.
Dissenting opinion filed by Circuit Judge NEWMAN.
GAJARSA, Circuit Judge.
This has been a long and arduous journey for the par-
ties in this litigation, but this should be the final curtain
of the saga, which commenced in 1974 with the filing of
the patent application that eventually matured as U.S.
Patent No. 6,436,135 (“’135 patent”). In this patent
infringement action, W.L. Gore & Associates, Inc. (“Gore”)
appeals the United States District Court for the District
of Arizona’s judgment, after a jury verdict, that (1) found

* Circuit Judge Gajarsa assumed senior status on
July 31, 2011.
3 BARD PERIPHERAL v. WL GORE

the ’135 patent willfully infringed and not invalid for
improper inventorship, anticipation, obviousness, or lack
of written description, and (2) awarded enhanced dam-
ages, attorneys’ fees and costs, and an ongoing royalty in
favor of Bard Peripheral Vascular, Inc. and David Gold-
farb (collectively, “Bard”). Bard Peripheral Vascular, Inc.
v. W.L. Gore & Assocs., Inc. (“Final Judgment”), No. 03-
CV-0597 (D. Ariz. Aug. 24, 2010), ECF No. 1047. Because
we find that there is substantial evidence to support the
jury’s verdict of no improper inventorship, anticipation,
obviousness, or lack of written description and of willful
infringement, and the district court did not abuse its
discretion in awarding enhanced damages, attorneys’ fees
and costs, and an ongoing royalty, we affirm the judg-
ment. 1
BACKGROUND
A.
The technology in this case involves prosthetic vascu-
lar grafts that are fabricated from highly-expanded
polytetrafluoroethylene (“ePTFE”). ’135 patent col.1 ll.3–
5. The grafts are used to bypass or replace blood vessels
to assure adequate and balanced blood flow to particular
parts of the body. Id. col.1 ll.6–7.
In the early 1970s, when the invention was made,
ePTFE was produced as tubes that had a struc-

1 The majority affirms on the record presented after
two previous appeals to this court and facts as found by
the United States Patent and Trademark Office and a
jury. Contrary to the dissent, we are not free to ignore
the long history of this case and these prior determina-
tions. We 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
Shakespearean tragedy.
BARD PERIPHERAL v. WL GORE 4

ture consisting of solid nodes of PTFE connected
by thin PTFE fibrils. The distance between the
nodes is referred to as the fibril length [or the in-
ternodal distance]. This distance is important to
the suitability of the ePTFE material for use as a
vascular graft.
Cooper v. Goldfarb (“Cooper II”), 240 F.3d 1378, 1381
(Fed. Cir. 2001); see also Cooper v. Goldfarb (“Cooper I”),
154 F.3d 1321, 1324 (Fed. Cir. 1998). Gore sells ePTFE
under the brand name “Gore-Tex.” Cooper I, 154 F.3d at
1324.
The ’135 patent, entitled “Prosthetic Vascular Graft,”
was filed on October 24, 1974 and issued nearly twenty-
eight years later on August 20, 2002. ’135 patent at [54],
[22], [45]. The ’135 patent discloses a graft “formed from
a small bore tube of polytetrafluoroethylene which has
been heated, expanded and sintered so as to have a mi-
croscopic superstructure of uniformly distributed nodes
interconnected by fibrils . . . .” Id. col.3 ll.41–44. A major
objective of the claimed invention is providing “a homoge-
neously porous vascular prosthesis” with “small nodes
interconnected by extremely fine fibrils to form an open
superstructure which will allow uniform, controlled
transmural cellular ingrowth and thereby assure the
establishment and maintenance of a thin, viable neoin-
tima as well as firm structural integration of the graft
into the body.” Id. col.3 ll.27–34.
Bard asserts that Gore infringes claims 20 to 27 of the
’135 patent, of which independent claim 20 is representa-
tive:
20. An artificial vascular prosthesis comprising
expanded, porous, polytetrafluorocthylene [sic]
having a microstructure consisting of nodes inter-
connected by fibrils which permits tissue in-
5 BARD PERIPHERAL v. WL GORE

growth, wherein an average distance between
nodes is not less than about 6 microns and is
small enough to prevent transrmural [sic] blood
flow.
Id. col.12 ll.1–6 (emphases added). Claims 21 to 24, which
depend from claim 20, claim an upper limit on the aver-
age distance between the nodes from about 80 to about
200 microns. Id. col.12 ll.7–18. Independent claims 25 to
27 claim that the average distance between the nodes is
about 6 to about 80 microns. Claims 25 and 26 also
specify “a wall thickness greater than about 0.2 millime-
ters and less than about 0.8 millimeters.” Id. col.12 ll.21–
22, 28–29. Claim 26 further adds the limitation of “an
average density in the range of between about 0.2 and 0.5
grams per millimeter.” Id. col.12 ll.30–31.
The prior art at issue in this appeal includes two arti-
cles, one by Dr. Jay Volder and one by Dr. Hiroshi Ma-
tsumoto. See Jay G. R. Volder et al., A-V Shunts Created
in New Ways, Transactions, American Society for Artifi-
cial Internal Organs, vol. XIX, Apr. 8–9, 1973, at 38–42
(“Volder”); H. Matsumoto et al., A New Vascular Prosthe-
sis for a Small Caliber Artery, Surgery, vol. 74, no. 4, Oct.
1973, at 519–23 (“Matsumoto”). Both publications were
considered by the examiner at the United States Patent
and Trademark Office (“PTO”) during the prosecution of
the ’135 patent and are listed on the first page of the
patent-in-suit. ’135 patent at [56].
The factual history of this case has been discussed in
a previous decision of this court:
[Peter] Cooper was the Plant Manager of [Gore’s]
Flagstaff, Arizona facility, and primarily was in-
volved in making ePTFE tubes. Cooper provided
the tubes to various researchers, who evaluated
their suitability for vascular grafts. During the
BARD PERIPHERAL v. WL GORE 6

course of his work, Cooper discovered that mate-
rial from ePTFE tubes with fibril lengths . . . [of
about 5 to 100 microns] was suitable for use in
vascular grafts.
...
During the same period, Goldfarb was Director of
Research and Clinical Staff Surgeon at the Ari-
zona Heart Institute [(“AHI”)], and was conduct-
ing research on artificial vascular grafts. Between
February and April of 1973, Cooper sent Goldfarb
a number of ePTFE tubes to use in his research.
Although Cooper intended that Goldfarb use the
tubes for vascular grafts, Cooper did not have any
right of control over Goldfarb’s research, and
Goldfarb was not required to use the tubes sup-
plied by Cooper or to perform his experiments in
any particular way.
Goldfarb conducted a series of experiments involv-
ing 21 grafts made from the tubes Cooper pro-
vided. On June 13, 1973, the graft labeled “2-73
RF,” which came from Lot 459-04133-9 provided
by Cooper, was determined to be a successful im-
plant in a dog.
Cooper II, 240 F.3d at 1381.
B.
The ’135 patent was previously the subject of an inter-
ference proceeding between Cooper and Goldfarb at the
Board of Patent Appeals and Interferences (“Board”),
Interference No. 101,100 (“Interference”). On April 2,
1974, Cooper filed Patent Application No. 05/457,711
claiming the use of ePTFE as a vascular graft. Cooper I,
154 F.3d at 1325. On October 24, 1974, Goldfarb filed
Patent Application No. 05/517,415 also claiming the use of
7 BARD PERIPHERAL v. WL GORE

ePTFE as a vascular graft. Id. at 1326. On September
19, 1983, the PTO declared an interference between the
two patent applications with Cooper as the senior party
and Goldfarb as the junior party. Id. The only count,
which is “the Board’s description of the interfering subject
matter that sets the scope of admissible proofs on prior-
ity,” 37 C.F.R. § 41.201, from the Interference relevant to
this case states:
An artificial vascular prosthesis comprising ex-
panded, porous, polytetraflouroethylene [sic] hav-
ing a microstructure consisting of nodes
interconnected by fibrils which permits tissue in-
growth, wherein said fibrils are above about 5 mi-
crons up to 100 microns in length.
Cooper I, 154 F.3d at 1326. The Board awarded priority
of invention to Goldfarb because Goldfarb established that
he had reduced the invention to practice before Cooper.
Id. at 1326–27.
This court affirmed “the Board’s determination that
Goldfarb had conceived the invention and reduced it to
practice by July of 1973.” Id. at 1331. This court also,
however, determined that the Board erred “by failing to
consider whether Goldfarb’s efforts inure to the benefit of
Cooper,” and remanded the case for the Board to consider
that issue. Id. at 1333.
On appeal for the second time, this court explained
that Cooper conceived the invention, but only after send-
ing 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. Id. Additionally, Cooper neither communi-
cated his finding to Goldfarb before Goldfarb made the
invention nor did he exercise diligence in an attempt to
BARD PERIPHERAL v. WL GORE 8

reduce the invention to practice. Id. at 1381–83. There-
fore, this court found that “Cooper has not established
that he contemporaneously appreciated that the material
tested by Goldfarb met the fibril length limitation of the
interference count, and has not established that Gold-
farb’s knowledge of the material’s fibril lengths inured to
his benefit.” Id. at 1381–82. Accordingly, this court
affirmed the Board’s decision that “the relationship
between Cooper and Goldfarb was such that Goldfarb’s
work did not inure to Cooper’s benefit” and priority of
invention was awarded to Goldfarb. Id. at 1380.
C.
On March 28, 2003, Bard filed suit against Gore for
infringement of the ’135 patent. After a seventeen-day
trial, on December 11, 2007, a jury found the ’135 patent
valid and willfully infringed by Gore. Bard Peripheral
Vascular, Inc. v. W.L. Gore & Assocs., Inc. (“Verdict
Form”), No. 03-CV-0597 (D. Ariz. Dec. 11, 2007), ECF No.
771. More specifically, the jury found that the ’135 patent
was not invalid for improper inventorship, anticipation,
obviousness, or lack of written description. Id. at 16–19.
The jury awarded Bard lost profits in the amount of
$102,081,578.82 and reasonable royalties in the amount
of $83,508,292.20, and set a reasonable royalty rate of
10%. Id. at 22–23.
In what it deemed “the most complicated case th[e
district] court has presided over,” Bard Peripheral Vascu-
lar, Inc. v. W.L. Gore & Assocs., Inc. (“License”), No. 03-
CV-0597, slip op. at 1 (D. Ariz. July 21, 2010), ECF No.
1057, the court denied Gore’s motions for judgment as a
matter of law on inventorship, anticipation, obviousness,
written description, and willfulness. Bard Peripheral
Vascular, Inc. v. W.L. Gore & Assocs., Inc. (“Post-Trial I”),
586 F. Supp. 2d 1083, 1099 (D. Ariz. 2008); Bard Periph-
9 BARD PERIPHERAL v. WL GORE

eral Vascular, Inc. v. W.L. Gore & Assocs., Inc. (“Obvious-
ness I”), No. 03-CV-0597, 2008 WL 2954187, at *6 (D.
Ariz. July 29, 2008). The court also denied Gore’s re-
newed motions for judgment as a matter of law on those
issues. Bard Peripheral Vascular, Inc. v. W.L. Gore &
Assocs., Inc. (“Post-Trial II”), No. 03-CV-0597, 2009 WL
886514, at *12–13 (D. Ariz. Mar. 31, 2009); Bard Periph-
eral Vascular, Inc. v. W.L. Gore & Assocs., Inc. (“Obvious-
ness II”), No. 03-CV-0597, 2009 WL 886515, at *7 (D. Ariz.
Mar. 31, 2009).
The district court awarded Bard enhanced damages
by a factor of two, doubling Bard’s award from the
$185,589,871.02 jury verdict amount to $371,179,742.04.
Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs.,
Inc. (“Damages”), No. 03-CV-0597, slip op. at 20, 23 (D.
Ariz. Mar. 31, 2009), ECF No. 951. The court also
awarded Bard its attorneys’ fees and non-taxable costs in
the amount of $19 million. Id. at 23. Additionally, the
court denied Bard’s motion for a permanent injunction,
but granted Bard’s alternative motion for the imposition
of an ongoing royalty. Bard Peripheral Vascular, Inc. v.
W.L. Gore & Assocs., Inc. (“Injunction”), No. 03-CV-0597,
2009 WL 920300, at *4–10 (D. Ariz. Mar. 31, 2009). The
court awarded Bard an ongoing royalty with a range of
royalty rates from 12.5% to 20% for Gore’s various types
of infringing grafts. 2 License, slip op. at 15–16.

2 As in Paice LLC v. Toyota Motor Corp.,

We use the term ongoing royalty to distinguish
this equitable remedy from a compulsory li-
cense. The term “compulsory license” implies
that anyone who meets certain criteria has
congressional authority to use that which is li-
censed. By contrast, the ongoing-royalty order
at issue here is limited to one particular . . . de-
BARD PERIPHERAL v. WL GORE 10

The district court entered an amended final judgment
on August 24, 2010, and Gore timely appealed on August
25, 2010.
The district court had jurisdiction under 28 U.S.C. §
1338(a), and we have appellate jurisdiction under 28
U.S.C. § 1295(a)(1).
DISCUSSION
We review denial of post-trial motions for judgment as
a matter of law under the applicable regional circuit law,
the Ninth Circuit in this case. See Revolution Eyewear,
Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 1370 (Fed. Cir.
2009). The Ninth Circuit reviews a district court’s denial
of motions for judgment as a matter of law de novo. Janes
v. Wal-Mart Stores Inc., 279 F.3d 883, 886 (9th Cir. 2002).
A “jury’s verdict must be upheld if it is supported by
substantial evidence, . . . even if it is also possible to draw
a contrary conclusion.” Pavao v. Pagay, 307 F.3d 915, 918
(9th Cir. 2002). Substantial evidence is “relevant evi-
dence as reasonable minds might accept as adequate to
support a conclusion.” Three Boys Music Corp. v. Bolton,
212 F.3d 477, 482 (9th Cir. 2000) (citation omitted). The
Ninth Circuit “disregard[s] all evidence favorable to the
moving party that the jury is not required to believe, and
may not substitute its view of the evidence for that of the
jury.” Johnson v. Paradise Valley Unified Sch. Dist., 251
F.3d 1222, 1227 (9th Cir. 2001) (internal quotation marks
and citations omitted). The court will not “weigh the

fendant[]; there is no implied authority in the
court’s order for any other [graft] manufacturer
to follow in [Gore]’s footsteps and use the pat-
ented invention with the court’s imprimatur.

504 F.3d 1293, 1314 n.13 (Fed. Cir. 2007) (citation omit-
ted).
11 BARD PERIPHERAL v. WL GORE

evidence or assess the credibility of witnesses in deter-
mining whether substantial evidence exists.” Landes
Constr. Co. v. Royal Bank of Can., 833 F.2d 1365, 1371
(9th Cir. 1987) (citations omitted).
We review a district court’s “award of enhanced dam-
ages and attorney fees under an abuse of discretion
standard.” ACCO Brands, Inc. v. ABA Locks Mfrs. Co.,
501 F.3d 1307, 1312 (Fed. Cir. 2007) (citation omitted).
We also review an award of a royalty-bearing license and
refusal to issue a permanent injunction for abuse of
discretion. On Demand Mach. Corp. v. Ingram Indus.,
Inc., 442 F.3d 1331, 1337 (Fed. Cir. 2006). A district court
abuses its discretion when “its decision is based on clearly
erroneous findings of fact, is based on erroneous interpre-
tations of the law, or is clearly unreasonable, arbitrary or
fanciful.” Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,
1460 (Fed. Cir. 1998) (en banc) (citation omitted).
Gore contends that the jury’s verdict on the inventor-
ship, anticipation, obviousness, written description, and
willful infringement issues was not supported by substan-
tial evidence and the district court abused its discretion
regarding the issues of enhanced damages, attorneys’ fees
and costs, and ongoing royalties. For the following rea-
sons, we disagree.
A.
Inventorship is “a question of law that we review de
novo, based on underlying facts which we review for clear
error.” Univ. of Pittsburgh of the Commonwealth Sys. of
Higher Educ. v. Hedrick, 573 F.3d 1290, 1297 (Fed. Cir.
2009). When this court reviews the denial of post-verdict
motions for judgment as a matter of law on “mixed ques-
tion[s] of law and fact given to a jury . . . , we must sus-
tain the jury’s conclusion unless the jury was not
presented with substantial evidence to support any set of
BARD PERIPHERAL v. WL GORE 12

implicit findings sufficient under the law to arrive at its
conclusion.” Eli Lilly & Co. v. Aradigm Corp., 376 F.3d
1352, 1362 (Fed. Cir. 2004) (citation omitted) (calling
substantial evidence that which “a reasonable mind might
accept as adequate to support a conclusion”).
Section 116 of Title 35 of the United States Code
states that “[w]hen an invention is made by two or more
persons jointly, they shall apply for patent jointly.” “The
inventors as named in an issued patent are presumed to
be correct. Thus, a party alleging non joinder must meet
the heavy burden of proving its case by clear and convinc-
ing evidence.” Natron Corp. v. Schukra U.S.A., Inc., 558
F.3d 1352, 1356 (Fed. Cir. 2009) (citations omitted). A
person is “a joint inventor only if he contributes to the
conception of the claimed invention.” Eli Lilly, 376 F.3d
at 1359 (citations omitted). Conception “requires that the
inventor appreciate that which he has invented.” Invitro-
gen Corp. v. Clontech Labs., 429 F.3d 1052, 1063 (Fed.
Cir. 2005). Joint inventorship, therefore, arises only
“when collaboration or concerted effort occurs—that is,
when the inventors have some open line of communication
during or in temporal proximity to their inventive efforts.”
Eli Lilly, 376 F.3d at 1359. Additionally, a joint inventor
must
(1) contribute in some significant manner to the
conception or reduction to practice of the inven-
tion, (2) make a contribution to the claimed inven-
tion that is not insignificant in quality, when that
contribution is measured against the dimension of
the full invention, and (3) do more than merely
explain to the real inventors well-known concepts
and/or the current state of the art.
Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir.
1998). Therefore, in order to prevail at trial, Gore had to
13 BARD PERIPHERAL v. WL GORE

prove by clear and convincing evidence that Cooper con-
tributed to Dr. Goldfarb’s conception of the internodal
distances in a significant way.
The jury found that the ’135 patent was not invalid
for improper inventorship by finding that Cooper and
Goldfarb were not joint inventors of the claimed inven-
tion. 3 Verdict Form, at 18. The district court determined
that “Gore failed to present sufficient evidence to show
that a reasonable jury could not have found the patent
valid notwithstanding Gore’s claims of improper inventor-
ship” and denied Gore’s motion for judgment as a matter
of law on the issue. Post-Trial I, 586 F. Supp. 2d at 1094.
On appeal, Gore argues that Cooper’s contributions to the
conception of the invention were significant and make
him a joint inventor. We hold that Bard presented sub-
stantial evidence for the jury to find that Goldfarb and
Cooper were not joint inventors 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 col-
laboration with Goldfarb did not contribute to the concep-
tion of the invention in a significant manner.
In an appeal from the Interference, this court deter-
mined that
[the evidence] do[es] not indicate that Cooper
expected that the ePTFE material that was to be
tested by Goldfarb had the fibril lengths required
by the interference count, or that Cooper submit-
ted the material to Goldfarb for a determination of

3 The jury also found that Dr. Volder, who was not
a party to this litigation and the author of a prior art
article, was not the sole inventor and that Dr. Volder and
Goldfarb were not joint inventors. Verdict Form, at 18.
Gore did not appeal this finding.
BARD PERIPHERAL v. WL GORE 14

its fibril lengths. As noted in Cooper I, . . . Cooper
was focusing on the porosity of the material at
that time, not its fibril length. Cooper I, 154 F.3d
at 1324. Indeed, Cooper admits that, even after
he conceived the importance of fibril length, he
did not convey that information to Goldfarb. He
also admits that he did not ask Goldfarb to use
grafts with fibril lengths required by the interfer-
ence count, or to determine the fibril lengths of
successful grafts. While Cooper was not required
to communicate his conception to Goldfarb, Cooper
I, 154 F.3d at 1332, his failure to convey any in-
formation or requests regarding fibril length pre-
vents 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 Gold-
farb’s reduction to practice in 1973.
Cooper II, 240 F.3d at 1385. This lack of communica-
tion and utter lack of understanding of what would make
a successful graft is substantial evidence in support of the
jury’s verdict implicitly finding that Cooper’s contribution
was insignificant.
Although Gore argues that Cooper “conveyed [the in-
ternodal distance] physically by making and sending the
invention embodiment to Goldfarb,” it admits that “Coo-
per did not verbally convey the internodal distance.”
Appellant’s Br. 46. Additionally, Goldfarb testified at
trial that the various tubes Gore sent to him looked the
same to the naked eye, but each tube was different, and
15 BARD PERIPHERAL v. WL GORE

that each individual tube’s microstructure varied along
the length of the tube. J.A. 9370–72, 76. Goldfarb per-
sonally selected the most promising sections for implanta-
tion. [Id]. Goldfarb also testified that after an initial set
of implantations, he gave a Gore employee specifications
of what might make a more successful graft, including
specific internodal distances. J.A. 9398–99. Therefore,
the jury could have reasonably determined that “physi-
cally conveying” the undifferentiated tubes to Goldfarb
was an insignificant contribution to the conception of the
importance of internodal distance when weighed against
Goldfarb’s personal selections and directions.
As further evidence of the insignificance of Cooper’s
contribution, Cooper previously testified in the Interfer-
ence that he did not provide Goldfarb information about
the GORE-TEX structure “in any great detail” when they
met. J.A. 23112. He also testified that he later resorted
to taking Goldfarb’s slides to learn what variables in the
grafts were important in producing good results. J.A.
36993–94. Also in the Interference, former Gore employee
Richard Mendenhall testified that “there was no discus-
sion of substance” at a meeting with Cooper and Goldfarb,
and that it was Goldfarb who explained to Cooper “the
characteristics that were ideal for the synthetic artery,”
not the other way around. J.A. 22648, 22642. Finally, in
the present case, Goldfarb testified that, with the excep-
tion of a statistician’s suggestion to randomize the place-
ment of certain grafts, no one from Gore gave him any
instruction regarding how to set up his experiments,
including what types of grafts to use, what characteristics
to look for, and what range of variables would produce a
successful graft. J.A. 31638–40. Notably, Gore employee
Dan Detton’s previous deposition testimony was read into
the record stating that Cooper never made grafts, never
extruded tubing that was used to make grafts, and did not
BARD PERIPHERAL v. WL GORE 16

contribute to the design of the structure that Goldfarb
made. When asked if Cooper contributed to the design of
the structure made by Goldfarb, Detton said “you could
generally count on whatever he said as being probably
180 degrees from what was correct.” 4
In addition to evidence of Cooper’s failure to commu-
nicate the internodal distance to Goldfarb, or make any
contribution to the conception of internodal distance, Bard
also presented evidence of Goldfarb’s control over his
experiments. A Gore “Trip Report” stated that “Dr.
Goldfarb is starting an evaluation of synthetic materials
suitable for a bypass graft and is willing to include
GORE-TEX in his study.” J.A. 39694 (emphasis added). 5
A February 14, 1973 letter from Cooper to Goldfarb
explained that enclosed were “a variety of sizes of GORE-
TEX tubes for your animal artery prosthetic experi-
ments.” J.A. 41235 (emphasis added). Also, Goldfarb
testified that Cooper “had very little contact with [him],”

4 The dissent complains that Detton recanted some
other earlier testimony during trial, Dissent at 11–13, but
the jury was not required to believe his changed testi-
mony. It could and did believe his original testimony.
And “[i]n reviewing a jury verdict, the court must draw all
reasonable inferences in favor of the verdict, without
making credibility determinations and without reweigh-
ing the evidence.” Johns Hopkins Univ. v. Datascope
Corp., 543 F.3d 1342, 1350 (Fed. Cir. 2008) (Newman, J.,
dissenting) (citing Reeves v. Sanderson Plumbing Prods.,
Inc., 503 U.S. 133, 150 (2000)) (“When reviewing a jury
verdict, it is impermissible for the appellate court to
substitute its own findings based on the evidence that was
before the jury . . . .” (citing Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 255 (1986))); see also Johnson, 251
F.3d at 1227.
5 This statement is directly contrary to the dissent’s
characterization of Goldfarb as nothing more than a
scientist acting at Gore’s direction.
17 BARD PERIPHERAL v. WL GORE

and that it was Mendenhall who first contacted him
regarding the use of ePTFE in medicine. J.A. 9409,
31564. Finally, Cooper himself wrote letters to another
doctor stating that “[a]ny success at this point in time is
the direct result of the AHI [i.e., Goldfarb’s,] efforts,” and
that the “AHI has, in a well-organized, productive fash-
ion, described, with a fair degree of accuracy, the specific
structure necessary for a viable vascular graft.” 6 J.A.
29587, 35493.
Thus, although Gore attempts to recast its argument
from inurement in the Interference to joint inventorship
in the present case, Gore’s argument remains unchanged
and there is still no evidence that Cooper either recog-
nized or appreciated the critical nature of the internodal
distance and communicated that key requirement to
Goldfarb before Goldfarb reduced the invention to prac-
tice. Accordingly, substantial evidence supports the jury’s
finding that the ’135 patent is not invalid for improper
inventorship, and the district court did not err in denying
Gore’s motion for judgment as a matter of law on the
issue.
It is apparent that the dissent reaches its opposite
conclusion by ignoring the applicable standard of review
and giving insufficient weight to the jury’s verdict. By
citing only to the limited facts that support Gore’s case
and relying on a mistaken understanding of the invention
at issue, the dissent fails to “disregard all evidence favor-
able to the moving party that the jury is not required to
believe” and intentionally, but impermissibly, “substi-
tute[s] its view of the evidence for that of the jury.”

6 We note that despite this substantial evidence,
the dissent insists that Goldfarb “did not invent the
effective graft materials.” Dissent at 16.
BARD PERIPHERAL v. WL GORE 18

Johnson, 251 F.3d at 1227 (internal citations and quota-
tion marks omitted).
As to the facts, the dissent states that Cooper con-
ceived the invention and Gore “disclosed [it] to Goldfarb”,
Dissent at 17 & 19, while Goldfarb did little more than
“test” the material at Cooper’s direction. Dissent at 1–2.
It states that “Gore possessed” the invention before Gold-
farb, Dissent at 14, and credits Gore’s argument that
Cooper “was at least a joint inventor.” Dissent at 17. The
dissent concludes that the “verdict is against the weight of
the evidence.” Dissent at 20. Ignoring the problem
inherent in the dissent’s misstatement of the applicable
standard of review, we note that this court has previously
concluded that Goldfarb independently conceived and
reduced the invention to practice. Cooper I, 154 F.3d at
1330–31. Cooper conceived of the invention only after
sending the tubes to Goldfarb and never communicated
that conception to Goldfarb. Cooper II, 240 F.3d at 1385.
Moreover, as to the invention, the dissent states that
Goldfarb could not be the sole inventor because Gore
“possessed” the invention before Goldfarb, and Cooper
suggested ePTFE as a vascular graft to Goldfarb. Dissent
at 14–15. (citing to Shatterproof Glass Corp. v. Libbey-
Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985) (find-
ing “substantial evidence on which a reasonable jury
could have found that the inventors were correctly
named” despite conflicting trial testimony)). 7 However,

7 Notably, the dissent cites to Shatterproof for the
proposition that one “may use the services, ideas, and aid
of others in the process of perfecting his invention without
losing his right to a patent,” but simultaneously ignores
Shatterproof’s recognition—on the same page—that “to
the extent that conflicting viewpoints were presented [at
trial], this was within the province of the jury.” 758 F.2d
at 624 (Newman, J.).
19 BARD PERIPHERAL v. WL GORE

this court has explained previously that “a person will not
be a co-inventor if he or she does no more than explain to
the real inventors concepts that are well known and the
current state of the art.” Fina Oil & Chem. Co. v Ewen,
123 F.3d 1466, 1473 (Fed. Cir. 1997) (internal citations
omitted). “[T]o be a joint inventor, an individual must
make a contribution to the conception of the claimed
invention that is not insignificant in quality, when that
contribution is measured against the dimension of the full
invention.” Id. In this case, Gore did know about ePTFE
before Goldfarb, but the potential use of ePTFE as a
vascular graft was not a new concept and any suggestion
by Cooper to use the material was insignificant.
Rather than the idea of using ePTFE as a graft, the
claimed invention in this case is a vascular prosthesis
made from ePTFE having a very specific range of dis-
tances between nodes, which are connected by fibrils. See,
e.g., ’135 patent col.12 ll.1–6; Cooper II, 240 F.3d at 1381.
Before Goldfarb made his invention, other doctors had
tried to use ePTFE as a small bore vascular graft, but
none understood why apparently identical grafts would
often perform differently when implanted. [J.A. 35044,
41829, 46193, 49746]. Goldfarb was the first person to
discover that a specific internodal distance was the de-
termining factor in graft success and reduce that knowl-
edge to practice. Cooper II, 240 F.3d at 1380.
The dissent points to letters detailing the results of
the experiments by Drs. Sharp and Kelly, Dissent at 5–7,
which show some patent ePTFE grafts, as support for the
conclusion that Goldfarb could not be the sole inventor. 8
However, this court previously considered those letters

8 The dissent also cites to an article by Volder. Dis-
sent at 5. This reference is dealt with in subsection C of
the Discussion.
BARD PERIPHERAL v. WL GORE 20

and found that they have no effect on Goldfarb’s inventor-
ship. As to the Sharp experiment, this court previously
concluded that the grafts successfully used by Sharp were
not shown to have the same fibril lengths as those in
Goldfarb’s invention. Cooper I, 154 F.3d at 1328–29. As
to Kelly’s experiment, the dissent neglects to mention that
although the grafts used fell within the claim limitations
of Goldfarb’s invention, Cooper considered Kelly’s results
to be a failure. 9 Id. at 1325, 1328.
Cooper never shared whatever knowledge he had
about internodal distances with Goldfarb. Instead, Coo-
per’s contribution to Goldfarb’s invention can be summa-
rized as handing Goldfarb an undifferentiated selection of
ePTFE tubes, some of which turned out to be suitable for
use as a graft. Because Cooper did little more than share
with Goldfarb what was already well known, the jury had
substantial evidence to find that Cooper’s contribution
was not significant enough to make him a joint inventor
and we must defer to that finding. 10 See, e.g., Hess v.
Advanced Cardiovascular Sys., 106 F.3d 976, 981 (Fed.
Cir. 1997) (stating that “doing nothing more than explain-

9 In regard to Cooper’s notes on Kelly’s results, this
court previously found that, “[t]he next page of Cooper's
laboratory notebook is dated May 2, 1973. It refers to Dr.
Kelly’s experiments and samples submitted by Dr. Kelly.
The page bears the following notation: ‘Both [samples]
from Dr. Glenn Kelly U of Colorado. Femoral Vein in
Dogs—Both Failed.’ The page was signed by Cooper on
May 2 . . . .” Cooper I, 154 F.3d at 1325.
10 We note that the dissent also complains that
counsel for Bard repeatedly mentioned during trial that
Goldfarb came up with invention. We decline to address
this argument because neither the dissent nor Gore’s brief
provide a legal reason why those statements constitute
error. Additionally, it should be noted that counsel for
Gore also repeatedly mentioned that Cooper was the one
who first conceived of the invention.
21 BARD PERIPHERAL v. WL GORE

ing to the inventors what the then state of the art was
and supplying a product to them for use in their inven-
tion” does not automatically make one a joint inventor).
B.
Anticipation is “a question of fact that we review for
substantial evidence when tried to a jury.” Orion IP, LLC
v. Hyundai Motor Am., 605 F.3d 967, 974 (Fed. Cir. 2010)
(citation omitted). The jury found that claims 20 to 27 of
the ’135 patent were not invalid for anticipation by Ma-
tsumoto. Verdict Form, at 16. The district court deter-
mined that “the evidence establishes that the 1973
Matsumoto article was not enabling, as neither Gore nor
any of the other doctors with whom Gore was working,
could determine the structure disclosed in the Matsumoto
article or replicate Matsumoto’s results.” Post-Trial I, 586
F. Supp. 2d at 1092. The court cited the trial testimony of
Gore’s own fact witness, Dan Detton, who “stated that
‘you couldn’t figure anything’ from the Matsumoto article
‘because the article itself did not define anything.’” Id.
(internal citation omitted). Thus, the court found that
Gore “failed to establish that a reasonable jury would not
have a legally sufficient evidentiary basis to find for
[Bard]” and denied Gore’s motion for judgment as a
matter of law on anticipation. Id.
In Matsumoto, “vascular grafts of expanded polytetra-
fluoroethylene . . . 3 mm. in internal diameter and 3 to 5
cm. in length, were inserted between the dissected femo-
ral arteries in dogs” and the “patency rates of the grafts of
expanded polytetrafluoroethylene [wa]s 100 percent from
4.5 to 11 months following operation.” Matsumoto at 519.
Further, Matsumoto also made “microscopic findings
[that] showed a well-formed fibroplasia in the porous
layer and a thin, well-attached neointima on the inner
surface of expanded polytetrafluoroethylene.” Id.
BARD PERIPHERAL v. WL GORE 22

A “single prior art reference must expressly or inher-
ently disclose each claim limitation to anticipate a claim.
Additionally, the reference must enable one of ordinary
skill in the art to make the invention without undue
experimentation.” Orion, 605 F.3d at 975 (internal quota-
tion marks and citations omitted). Further, anticipation
must be proved by clear and convincing evidence. Id.
Bard presented substantial evidence to support the jury’s
verdict of no anticipation by Matsumoto.
Regarding whether Matsumoto is enabled, Dr. James
Anderson, Bard’s technical expert, testified that Matsu-
moto did “not [provide] enough information,” including
the “characteristics of the graft material,” for a doctor to
recreate a working vascular graft. J.A. 12063–64. This
testimony was in addition to that of Detton, who stated
that Matsumoto “wouldn’t have been enough for me to
even do much with.” J.A. 10960.
Bard also presented evidence that others were unable
to replicate Matsumoto’s work. Mendenhall testified that
the reaction to Matsumoto was that it was “[k]ind of a
fluke, really” and that “[n]obody was very able to repro-
duce that.” J.A. 49746. A Gore document titled “Flagstaff
Visit: 22:10:73, Dan Detton” also stated that Matsumoto
“claims 100% success on femoral arteries in dogs: but we
do not know what tubes we[re] used. So we start again.”
J.A. 102576–77. In addition to this evidence from Gore’s
own employees, other experts in the field also failed to
reproduce grafts like Matsumoto’s. On December 7, 1973,
Dr. Glenn Kelly wrote to Matsumoto and stated that
using “presumably identical material,” he was unable to
create grafts that remained unobstructed and did not
know how to resolve the “apparent conflict in our results.”
J.A. 35044. Additionally, on February 14, 1975, Dr. Ben
Eiseman wrote Dr. Kensuke Esato in Japan and stated
that while Matsumoto “detailed continued patency of
23 BARD PERIPHERAL v. WL GORE

vessels of 4–5 mm diameter over prolonged periods,”
“neither [h]e nor others in the U.S. [we]re having such
good luck.” J.A. 41829. Finally, Dr. Charles Campbell
declared that “[e]fforts in this country to duplicate the
results of Matsumoto have met with failure.” J.A. 46193.
Thus, Bard presented substantial evidence for the jury to
find that Matsumoto does not enable a person of ordinary
skill in the art to make the invention without undue
experimentation and cannot be used as anticipatory prior
art.
Even if Matsumoto were a proper prior art reference,
there is substantial evidence that Matsumoto does not
anticipate the claimed invention. The asserted claims
require specific “average distance[s] between nodes.” ’135
patent, col.12 ll.4–5, 24, 33, 38. Dr. Jock Wheeler, Gore’s
own technical expert, testified that Matsumoto, however,
did not refer to internodal distance, which was “really not
mentioned in th[e] article.” J.A. 12064. Although he also
stated that the internodal distance could be “readily
calculated from figure 4” of Matsumoto, J.A. 11247,
Goldfarb testified that “there was a fair amount of incon-
sistency . . . along each graft” so the portion of the graft
surface depicted in figure 4 was not representative of the
entire graft. J.A. 9371.
In the Interference, Cooper himself argued that “[o]ne
is left to speculate as to whether this small portion of the
Matsumoto graft is representative of the fibril length
throughout the entire graft.” J.A. 41926. Further, this
court noted that Harold Green, “the individual responsi-
ble for manufacturing expanded PTFE tubing for Gore in
1972–73,” testified that there was “difficulty controlling
the uniformity of the PTFE material” and that “fibril
lengths vary along each tube.” Cooper I, 154 F.3d at 1329.
The court also noted that Goldfarb testified that “fibril
BARD PERIPHERAL v. WL GORE 24

length varied tremendously . . . within the same graft.”
Id. (internal quotation omitted).
Finally, Matsumoto was already before the PTO dur-
ing prosecution of the ’135 patent, and the PTO did not
find that Matsumoto anticipated the ’135 patent. See Am.
Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350,
1359 (Fed. Cir. 1984), abrogated on other grounds by
Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d
1276, 1288–90 (Fed. Cir. 2011) (en banc) (stating that
when “no prior art other than that which was considered
by the PTO examiner is relied on by the attacker, he has
the added burden of overcoming the deference that is due
to a qualified government agency presumed to have
properly done its job . . . to issue only valid patents”).
The Supreme Court has recently held that invalidity
needs to be proved by clear and convincing evidence.
Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2242
(2011). Based on this record, a reasonable jury could find
that Gore failed to show by clear and convincing evidence
that Matsumoto anticipated the claimed invention.
Accordingly, the district court did not err in denying
Gore’s motion for judgment as a matter of law on antici-
pation.
C.
When reviewing the denial of a motion for judgment
as a matter of law, “this court reviews a jury’s conclusions
on obviousness, a question of law, without deference, and
the underlying findings of fact, whether explicit or im-
plicit within the verdict, for substantial evidence.” Muni-
auction, Inc. v. Thomson Corp., 532 F.3d 1318, 1324 (Fed.
Cir. 2008) (internal quotations and citations omitted).
The jury found the ’135 patent valid under 35 U.S.C. §
103 because the subject matter of the ’135 patent would
25 BARD PERIPHERAL v. WL GORE

not have been obvious to a person of ordinary skill in the
art in light of Volder alone for claims 20 to 24 and 27, or
Volder and Matsumoto in combination for claims 20 to 27.
Verdict Form, at 17. The district court denied Gore’s
motion for judgment as a matter of law on obviousness.
Obviousness II, 2009 WL 886515, at *7; Obviousness I,
2008 WL 2954187, at *6.
Volder discusses how “grafts of Gore-Tex porous
polytetrafluoroethylene (G-PTFE) were evaluated” and
that “G-PTFE is a material with extremely promising
characteristics” for A-V shunts. Volder at 38. Volder
found that “[s]hunts of G-PTFE have as favorable charac-
teristics that . . . are readily available” because “the
material withstands puncturing, and there is neointima
healing with extensive ingrowth of fibroblasts and capil-
laries.” Id. at 39. Additionally, while “the tissue infiltra-
tion is not complete in certain areas,” Volder “believed
that by increasing the average pore size of the material,
at the moment 5 μ, it will be possible to accelerate the
process of tissue infiltration and development of capillar-
ies,” which would “result in a faster healing and more
durable neointima.” Id.
A claim is obvious when “the differences between the
subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been
obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject
matter pertains.” 35 U.S.C. § 103. To determine whether
a patent is obvious, a district court must base its determi-
nation on factual inquiries involving: (1) the scope and
content of the prior art, (2) differences between the prior
art and the claims, (3) the level of ordinary skill in the
pertinent art, and (4) secondary considerations, such as
commercial success, satisfaction of a long-felt need, and
BARD PERIPHERAL v. WL GORE 26

failure of others. Graham v. John Deere Co. of Kansas
City, 383 U.S. 1, 17 (1966). 11
The asserted claims require specific “average dis-
tance[s] between nodes.” ’135 patent, col.12 ll.4–5, 24, 33,
38. In light of Volder alone, the district court found that
the following evidence at trial supported the legal conclu-
sion that claims 20 to 24 and 27 are not obvious:
(1) Volder was “repeatedly considered by
the PTO before, during, and after
Gore’s interference” proceeding, in
which Gore itself consistently distin-
guished Volder from Goldfarb’s inven-
tion;
(2) Dr. Volder, the author himself, stated
under oath in an unrebutted affidavit
that he thought “that the prosthetic
vascular structure conceived and de-
veloped by [Goldfarb] . . . was by no
means obvious to those actively con-
ducting research on expanded PTFE

11 Bard argues that Gore waived all theories of obvi-
ousness except that claim 20 was invalid in light of Volder
alone because that was the only Rule 50(a) motion Gore
made before the jury verdict. However, the district court
specifically held that “any renewed JMOL motion Gore
chooses to file as to obviousness shall not be limited to
Claim 20 and the Volder article.” Obviousness I, 2008 WL
2954187, at *4. This court is “not disposed to override a
district court’s determination of non-waiver.” Trading
Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1360 (Fed.
Cir. 2010) (internal quotation marks omitted). Thus, we
will not disturb the district court’s determination that
Gore’s renewed motions for judgment as a matter of law
on obviousness beyond claim 20 in light of Volder alone
were not waived.
27 BARD PERIPHERAL v. WL GORE

vascular structures during 1972 and
1973”;
(3) researchers were unable to invent a
successful graft even after Volder and
Matsumoto were published, and Coo-
per testified in 1975 that he was
“compelled to steal Dr. Goldfarb’s his-
tology slides” to determine why others
were not successful;
(4) Goldfarb testified that neither Volder
nor Matsumoto taught his invention,
and Anderson testified that he would
not have been able to create a working
graft based on Volder and Matsumoto;
and
(5) “pore size” and “internodal distance”
are not synonymous based on several
pieces of record evidence, including
Wilbert L. Gore’s, Gore’s founder, dec-
laration that “‘[p]ore size’ is not syn-
onymous with ‘fibril length’” in Volder
and Cooper and Goldfarb’s agreement
“that pore size bears no relationship
to fibril length” in the Interference.
Obviousness II, 2009 WL 886515, at *4–5 (some internal
quotation marks and citations omitted); see also Obvious-
ness I, 2008 WL 2954187, at *5.
In light of Volder and Matsumoto in combination, the
court also found, in addition to its above findings on
Volder alone, that the following evidence at trial sup-
ported the legal conclusion that claims 20 to 27 are not
obvious:
(1) like Volder, Matsumoto was “repeat-
edly considered by the PTO during the
BARD PERIPHERAL v. WL GORE 28

pendency of the Goldfarb application”
and was found not to invalidate the
claimed invention;
(2) other doctors, including ones working
for Gore itself, were unable to solve
the problems with graft development
after both Volder and Matsumoto
were published, and Cooper himself
could not determine why other re-
searchers were failing;
(3) “other researchers could not deter-
mine the structure disclosed in” Ma-
tsumoto or use Matsumoto “to create a
working vascular graft”;
(4) Goldfarb’s testimony that “Volder and
Matsumoto . . . did not teach his in-
vention,” and Detton’s testimony that
“Gore researchers had no idea what
type of ePTFE vascular graft Matsu-
moto used”; and
(5) “Gore’s own damaging admissions”
that Matsumoto “failed to disclose the
key parameter of internodal distance.”
Id. at *5–6 (internal quotation marks and citations omit-
ted).
The district court’s exhaustive findings, summarily
recited above, delineate the substantial evidence pre-
sented at trial to the jury about the scope and contents of
Volder and Matsumoto, their differences from the claimed
invention, and the objective indicia of nonobviousness.
See Obviousness II, 2009 WL 886515, at *4–6; Obvious-
ness I, 2008 WL 2954187, at *5. Neither Volder nor
Matsumoto disclosed the importance of the internodal
distance. Thus, the jury’s verdict that claims 20 to 27 of
the ’135 patent are not invalid as obvious in light of
29 BARD PERIPHERAL v. WL GORE

Volder alone, or Volder and Matsumoto in combination, is
clearly supported. The district court did not err in deny-
ing Gore’s motion for judgment as a matter of law on
obviousness.
The district court determined that for the same rea-
sons that it found Volder and Matsumoto in combination
would not render the ’135 patent obvious, there was also
no basis for finding claims 20 to 27 of the ’135 patent
obvious in light of Matsumoto alone. 12 Obviousness II,
2009 WL 886515, at *7. We agree. For the reasons stated
above regarding the nonobviousness of claims 20 to 27 of
the ’135 patent in light of Volder and Matsumoto in
combination and Matsumoto’s failure to anticipate claims
20 to 27 of the ’135 patent, the district court did not err in
denying Gore’s motion for judgment as a matter of law
that Matsumoto alone renders claims 20 to 27 of the ’135
patent obvious.
D.
The issue of whether “a patent is invalid for failure to
meet the written description requirement of 35 U.S.C. §
112, ¶ 1 is a question of fact, and we review a jury’s
determinations of facts relating to compliance with the
written description requirement for substantial evidence.”
Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1355
(Fed. Cir. 2010) (en banc) (internal quotation marks and
citations omitted). The written description issue in this

12 The jury’s verdict form did not designate whether
claims 20 to 27 of the ’135 patent were obvious in light of
Matsumoto alone, see Verdict Form, at 17, but it did ask
whether those claims of the ’135 patent were obvious in
light of Volder and Matsumoto, without specifying
whether both references had to be considered in combina-
tion, id. Based on the verdict form, the jury could have
found that Matsumoto alone rendered those claims of the
’135 patent invalid as obvious.
BARD PERIPHERAL v. WL GORE 30

case is whether the written description of the ’135 patent
supports the claims that are not limited to a prosthesis
with a wall thickness of 0.2 to 0.8 mm, namely claims 20
to 24 and 27. The jury determined that claims 20 to 27 of
the ’135 patent were not invalid for lack of adequate
written description. Verdict Form, at 19. The district
court found that substantial evidence demonstrated that
wall thickness is not an essential element of Goldfarb’s
invention and, thus, denied Gore’s motion for judgment as
a matter of law for lack of written description. Post-Trial
I, 586 F. Supp. 2d at 1091.
A patent’s written description must “‘clearly allow
persons of ordinary skill in the art to recognize that [the
inventor] invented what is claimed.’” Ariad, 598 F.3d at
1351 (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563 (Fed. Cir. 1991)). The test for sufficiency of written
description is “whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art
that the inventor had possession of the claimed subject
matter as of the filing date.” Id. (citations omitted).
The ’135 patent states that “the average internodal
distance, as measured along the axis of expansion 12,
must fall within a relatively narrow range of values, viz.,
between approximately 6 and 80 microns.” Col.5 ll.31–34
(emphasis added). Thus, a specific average internodal
distance is a requirement of the claimed invention. See
id. Alternatively, the written description also states that
“[w]all thickness is another factor affecting the establish-
ment and maintenance of a viable neointima in grafts.”
Id. col.6 ll.40–42 (emphasis added). Thus, although
“[g]rafts embodying the present invention, having wall
thicknesses in the range between 0.2 and 0.8 millimeters .
. . have exhibited excellent mechanical properties” and
“[g]rafts falling outside these ranges have been found to
be marginal or clinically unacceptable,” the language of
31 BARD PERIPHERAL v. WL GORE

the ’135 patent does not mandate a wall thickness within
the stated range for the claimed invention. Id. col.7 ll.9–
13, 15–17; see Martek Biosciences Corp. v. Nutrinova, Inc.,
579 F.3d 1363, 1371 (Fed. Cir. 2009) (“[A] patent claim is
not necessarily invalid for lack of written description just
because it is broader than the specific examples dis-
closed.”) (citations omitted).
Additionally, in the Interference, the PTO itself pro-
posed a count that did not include a wall thickness limita-
tion. See Cooper I, 154 F.3d at 1326. Even though
Goldfarb testified that a graft outside the range of 0.2 to
0.8 mm was “technically harder to handle,” he did “not
say[] it wouldn’t work.” J.A. 32117. Further, although
Goldfarb moved to amend the count to include a range for
wall thickness, the PTO denied the motion because “there
is evidence that fibril length is the critical variable, and in
terms of an interference, the broadest possible patentable
claim must be used as the count” and an amended count
with a wall thickness limitation would be “narrower than
the present count.” J.A. 41463. Cooper himself re-
sponded that “[o]nce it is known that fibril length is the
key to successful tissue growth, however, optimizing the
other structural features of the graft is, and was, a matter
of routine experimentation” and that “[t]he present count .
. . is supported by each party’s application [and] broadly
covers the real invention.” J.A. 25672–73 (emphases
added); see also J.A. 41462 (“Cooper argues . . . vigorously
that only fibril length is critical to the operability of the
claimed device.”).
Finally, at trial, Goldfarb testified that his invention
did not require a specific wall thickness because “wall
thicknesses were really dependent on the application of
the graft and not one wall thickness for all . . . implanta-
tions” was appropriate. J.A. 9400–01.
BARD PERIPHERAL v. WL GORE 32

Accordingly, substantial evidence supports the jury’s
finding that claims 20 to 24 and 27 of the ’135 patent are
not invalid for lack of written description, and the district
court did not err in denying Gore’s motion for judgment as
a matter of law on the issue.
E.
Determining whether or not infringement is willful is
a question of fact that must be established by clear and
convincing evidence and is reviewed for substantial
evidence. Comark Commc’ns, Inc. v. Harris Corp., 156
F.3d 1182, 1190 (Fed. Cir. 1998). The jury found that
Gore’s infringement of claims 20 to 27 of the ’135 patent
was willful, despite a November 2002 opinion of counsel
that the claims of the ’135 patent were invalid. Verdict
Form, at 20. The district court found that there was
“sufficient evidence for the jury to have found willful
infringement by clear and convincing evidence.” Post-
Trial I, 586 F. Supp. 2d at 1089. The evidence included
an extensive litigation history before the PTO where
Goldfarb was the sole inventor and Gore was the losing
party, and also included Gore’s reliance on the same
references that were before the PTO, which the PTO
found did not invalidate the ’135 patent, to support its
invalidity defenses. Id.
To establish willful infringement, “a patentee must
show by clear and convincing evidence that the infringer
acted despite an objectively high likelihood that its ac-
tions constituted infringement of a valid patent.” In re
Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007)
(en banc). For a finding of willfulness, once the “threshold
objective standard is satisfied, the patentee must also
demonstrate that this objectively-defined risk . . . was
either known or so obvious that it should have been
known to the accused infringer.” Id. Drawing inferences,
33 BARD PERIPHERAL v. WL GORE

especially for “an intent-implicating question such as
willfulness, is peculiarly within the province of the fact
finder that observed the witnesses.” Rolls-Royce Ltd. v.
GTE Valeron Corp., 800 F.2d 1101, 1110 (Fed. Cir. 1986).
Bard presented substantial evidence to satisfy both
prongs of the Seagate standard and support the jury’s
finding that Gore’s infringement was willful. The jury
heard evidence of the eighteen-year Interference, in which
Goldfarb was awarded priority of invention. Post-Trial I,
586 F. Supp. 2d at 1089; see Cooper II, 240 F.3d 1378;
Cooper I, 154 F.3d 1321. Based on the Interference, Gore
was aware of both the ’135 patent’s existence and Gold-
farb’s research activities at AHI. In addition, Gore relied
on Matsumoto and Volder to support its invalidity de-
fenses, even though those references were previously
considered and rejected as not invalidating by the PTO.
See ’135 patent at [56]; Am. Hoist, 725 F.2d at 1359.
Further, for example, the district court found that “Gore
ha[d] no valid evidentiary basis for meritoriously arguing
that Claims 20 through 27 of the Goldfarb patent [we]re,
by clear and convincing evidence, obvious” in light of
Matsumoto and Volder, which was “not a close call.”
Obviousness II, 2009 WL 886515, at *7. Based on this
evidence alone, it would have been reasonable for the jury
to find that Gore manufactured and sold grafts despite an
objectively high likelihood the grafts infringed the valid
’135 patent.
Additionally, “an infringer’s reliance on favorable ad-
vice of counsel . . . is not dispositive of the willfulness
inquiry.” Seagate, 497 F.3d at 1369. In cases “where
willful infringement is found despite the presence of an
opinion of counsel,” the “opinion of counsel was either
ignored or found to be incompetent.” Read Corp. v. Portec,
Inc., 970 F.2d 816, 829 (Fed. Cir. 1992), superseded on
other grounds as recognized by Hoechst Celanese Corp. v.
BARD PERIPHERAL v. WL GORE 34

BP Chems. Ltd., 78 F.3d 1575 (Fed. Cir. 1996). As the
district court determined, Bard presented substantial
evidence that Gore’s opinion of counsel was not based on
an objective perspective. Damages, slip op. at 9–11. In
addition to the opinion’s reliance on Matsumoto and
Volder, which were already rejected by the PTO, the bases
of alleged invalidity asserted in the opinion were “directly
contrary to the validity arguments [Gore] presented to the
PTO when attempting to patent Dr. Goldfarb’s invention.”
Damages, slip op. at 9. With the same law firm represent-
ing Gore both before and after the ’135 patent was issued,
the district court viewed the objectivity of the opinion as
questionable. Id. at 10. The district court also found that
the opinion was not “premised on the best evidence avail-
able” because it excluded certain available evidence that
was relevant to Gore’s invalidity defenses. Id. Thus,
there was also substantial evidence presented to the jury
that supports the finding that Gore knew or should have
known of the objectively high likelihood that its grafts
infringed the ’135 patent.
Gore’s presentation of “several defenses at trial . . .
does not mean the jury’s willfulness finding lacks a suffi-
cient evidentiary basis . . . . [T]he jury was free to decide
for itself whether [Gore] reasonably believed there were
any substantial defenses to a claim of infringement.” i4i
Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 860 (Fed. Cir.
2010), aff’d, 131 S. Ct. 2238 (2011) (citations omitted).
Accordingly, substantial evidence supports the jury’s
finding that Gore willfully infringed the ’135 patent, and
the district court did not err in denying Gore’s motion for
judgment as a matter of law on willfulness.
35 BARD PERIPHERAL v. WL GORE

F.
The jury concluded that Bard was entitled to damages
for Gore’s infringement of the ’135 patent: lost profits in
the amount of $102,081,578.82, reasonable royalties in
the amount of $83,508,292.20, and a reasonable royalty
rate of 10%. Verdict Form, at 22–23. In exercising its
discretion, the district court awarded Bard double en-
hanced damages of $371,179,742.04 and attorneys’ fees
and costs of $19 million. Damages, slip op. at 23.
Section 284 of Title 35 of the United States Code al-
lows a court to “increase the damages up to three times
the amount found or assessed.” This court has held that
“an award of enhanced damages requires a showing of
willful infringement.” Seagate, 497 F.3d at 1368. How-
ever, “the decision to grant or deny enhanced damages
remains firmly within the scope of the district court’s
reasoned discretion, informed by the totality of the cir-
cumstances.” Odetics, Inc. v. Storage Tech. Corp., 185
F.3d 1259, 1274 (Fed. Cir. 1999).
The district court did not abuse its discretion in
awarding enhanced damages. In addition to the jury’s
finding of willfulness that is supported by substantial
evidence, the court conducted a detailed and exhaustive
review of all nine Read factors to ascertain whether Gore
acted in bad faith to merit an increase of the jury’s dam-
ages award. Damages, slip op. at 4–19. The Read factors
for determining whether an infringer has acted in bad
faith include:
(1) whether the infringer deliberately copied the
ideas or design of another; (2) whether the in-
fringer, when he knew of the other’s patent pro-
tection, investigated the scope of the patent and
formed a good-faith belief that it was invalid or
that it was not infringed; (3) the infringer’s behav-
BARD PERIPHERAL v. WL GORE 36

ior as a party to the litigation; (4) defendant's size
and financial condition; (5) closeness of the case;
(6) duration of defendant's misconduct; (7) reme-
dial action by the defendant; (8) defendant’s moti-
vation for harm; and (9) whether defendant
attempted to conceal its misconduct.
Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209,
1225 (Fed. Cir. 2006) (citing Read, 970 F.2d at 826–27).
The court found that all of the factors, except as to
whether Gore attempted to conceal its misconduct,
weighed in favor of enhanced damages. Three of those
eight favorable factors, however, were only slightly in
favor of enhancement: namely, the good faith belief of
invalidity or non-infringement, behavior as a party to the
litigation, and closeness of the case. Damages, slip op. at
19–20. Thus, the court exercised its discretion by only
doubling the jury’s damages award, and not tripling as it
had the authority to do. Id. at 20. Based on the evidence,
the district court did not abuse its discretion in awarding
enhanced damages to Bard.
Section 285 of Title 35 of the United States Code
states that a “court in exceptional cases may award
reasonable attorney fees to the prevailing party.”
Whether a case is exceptional and, thus, eligible for an
award of attorneys’ fees requires the district court to first,
make a factual determination of whether a case is excep-
tional and second, exercise its discretion to determine
whether attorneys’ fees are appropriate. Cybor, 138 F.3d
at 1460.
The district court also found that there was sufficient
basis for deeming this case exceptional based on the jury’s
verdict of willfulness, the evidence supporting willfulness,
and the extensive litigation history between the parties
that Gore repeatedly lost yet continued to infringe.
37 BARD PERIPHERAL v. WL GORE

Damages, slip op. at 21–22. The court also determined
that Gore argued contradictory positions on infringement
throughout the litigation and relied on testimony that
was not credible. Id. at 22–23. Thus, the court concluded
that this case was exceptional, justifying the exercise of
its discretion in awarding of attorneys’ fees and costs. 13
Based on the record, the district court did not abuse its
discretion in awarding Bard attorneys’ fees and costs.
The district court denied Bard’s request for a perma-
nent injunction finding that it was in the public interest
to allow competition in the medical device arena, but in
lieu thereof granted Bard an ongoing royalty to compen-
sate for Gore’s future infringement. Injunction, 2009 WL
920300, at *4–10; see eBay Inc. v. MercExchange, L.L.C.,
547 U.S. 388, 391 (2006) (permitting the denial of a
permanent injunction if the public interest would be
disserved). The court set a 12.5% to 20% royalty rate on
Gore’s grafts depending on the different types of graft.
License, slip op. at 15–16.
The award of an ongoing royalty instead of a perma-
nent injunction to compensate for future infringement is
appropriate in some cases. Paice, 504 F.3d at 1314; see
also Shatterproof, 758 F.2d at 628 (upholding a court-
ordered royalty based on sales as a remedy for continuing
operations). Because of the public interest as the court
here determined, “the district court may wish to allow the
parties to negotiate a license amongst themselves regard-
ing future use of a patented invention before imposing an
ongoing royalty.” Paice, 504 F.3d at 1315. But if the
parties cannot reach agreement, “the district court could
step in to assess a reasonable royalty in light of the ongo-

13 The parties stipulated that $19 million was a rea-
sonable amount of attorneys’ fees and non-taxable costs in
this case. Damages, slip op. at 21.
BARD PERIPHERAL v. WL GORE 38

ing infringement.” Id. For this court to determine
whether the district court abused its discretion in setting
the ongoing royalty rate, the district court must explain
the reasoning in establishing the appropriate royalty rate.
Id. (citing Hensley v. Eckerhart, 461 U.S. 424, 437 (1983)
(“It [is] important . . . for the district court to provide a
concise but clear explanation of its reasons for the fee
award.”)).
Here, Bard proposed a royalty rate of 35% for Gore’s
surgical graft products and 20% for Gore’s stent graft
products, while Gore proposed a royalty rate of 5.25% for
all of its infringing products. License, slip op. at 4. The
district court explained its reasons for establishing the
various royalty rates at “20% on surgical grafts, 15% on
stent-grafts, 12.5% on the VIABAHN® stent-graft, and
15% on the PROPATEN® surgical graft against” Gore.
Id. at 15–16. The court reasoned that a different royalty
rate was warranted between Gore’s surgical and stent
graft products because for surgical graft products, Gore
competes directly with Bard in the more established
market, while for stent graft products, a more recently
developed market, Bard does not presently directly com-
pete with Gore. Id. at 12. Thus, the court concluded that
“a free-market license between Bard and Gore would
separate the royalty rates on the two sets of products to
account for those differences.” Id. Thus, taking economic
market forces into account is a reasonable and valid
assumption by the district court.
Next, the district court determined that the ongoing
royalty on all of Gore’s products “should be higher than
the 10% reasonable royalty rate” set by the jury. Id. The
court considered the parties’ changed legal post-verdict
status: namely that the jury found the ’135 patent en-
forceable and not invalid and Gore had willfully infringed;
the court deemed this case exceptional so that Bard was
39 BARD PERIPHERAL v. WL GORE

awarded enhanced damages and attorneys’ fees and costs;
and Gore voluntarily chose to continue its post-verdict
infringement unabated. Id. at 13; see Amado v. Microsoft
Corp., 517 F.3d 1353, 1361–62 (Fed. Cir. 2008) (“Prior to
judgment, liability for infringement, as well as the valid-
ity of the patent, is uncertain, and damages are deter-
mined in the context of that uncertainty. Once a
judgment of validity and infringement has been entered,
however, the [damages] calculus is markedly different
because different economic factors are involved.” (citation
omitted)). The court also considered other economic
factors, including that Bard and Gore compete directly
with respect to surgical grafts, Gore profits highly from its
infringing products, Gore potentially faces stiffer losses
that include a permanent injunction if Bard prevails in a
second lawsuit, and Bard seeks adequate compensation
and lacks incentive to accept a below-market deal. Id. at
13. Finally, the court reasoned that the value Gore added
to its VIABAHN® and PROPATEN® grafts that are
bonded with heparin warranted lower royalty rates on
those products. Id. at 13. Based on the district court’s
reasoning, the court did not abuse its discretion in setting
a 12.5% to 20% royalty rate for the ongoing royalty on
Gore’s infringing grafts.
Accordingly, the district court’s award of enhanced
damages, attorneys’ fees and costs, and an ongoing roy-
alty as described in thorough and well-reasoned orders
was not an abuse of discretion.
CONCLUSION
For the foregoing reasons, we affirm the judgment
that the ’135 patent is valid and willfully infringed be-
cause the jury’s verdict is supported by substantial evi-
dence. We also conclude that the district court did not
abuse its discretion in awarding enhanced damages,
BARD PERIPHERAL v. WL GORE 40

attorneys’ fees and costs, and an ongoing royalty. We
commend the district court for its well-reasoned and well-
grounded opinions and its extensive and thoughtful
analysis of the case.
AFFIRMED
 United States Court of Appeals
for the Federal Circuit
__________________________

BARD PERIPHERAL VASCULAR, INC.
AND DAVID GOLDFARB, M.D.,
Plaintiffs/Counterclaim
Defendants-Appellees,
AND

C.R. BARD, INC.,
Counterclaim Defendant-
Appellee,
v.
W.L. GORE & ASSOCIATES, INC.,
Defendant/Counterclaimant-
Appellant.
__________________________

2010-1510
__________________________

Appeal from the United States District Court for the
District of Arizona in Case No. 03-CV-0597, Judge Mary
H. Murguia.
__________________________

NEWMAN, Circuit Judge, dissenting.
The court today holds that a person who performs the
requested test of a material that is provided to him for
testing for a specified use, can then, when the test is
successful, patent the material he was provided, for the
use for which it was tested. My colleagues hold that Dr.
BARD PERIPHERAL v. WL GORE 2

David Goldfarb, who was provided with Gore-Tex® tubu-
lar material for testing as a vascular graft in dogs, can
patent as his own the Gore-Tex material that Gore em-
ployees provided to him, and assert the exclusive right to
the use for which the material was provided. My col-
leagues hold that Dr. Goldfarb then can enforce this
patent against the provider of the Gore-Tex material that
he tested. My colleagues on this panel endorse and de-
fend these errors and improprieties, and now rule that
Gore is the willful infringer of this improperly obtained
patent on Gore’s product and use. My colleagues find no
blemish in this history of incorrect law, impropriety,
questionable advocacy, and confessed perjury. I respect-
fully dissent.
DISCUSSION
The saga of the patent in this suit starts in February
1973, when employees of W.L. Gore & Associates, in
connection with an ongoing program led by Gore’s Plant
Manager Peter Cooper, invited Dr. Goldfarb at the Ari-
zona Heart Institute to participate in testing the Gore-
Tex expanded polytetrafluoroethylene (ePTFE) for use as
a vascular graft. Gore-Tex ePTFE had already been
successfully tested as vascular grafts in dogs and sheep,
by surgeons at various universities and hospitals. Peter
Cooper and Gore employee Richard Mendenhall visited
Dr. Goldfarb, told him of the material, its properties, and
the results obtained and in progress, and invited him to
participate in the testing program. Dr. Goldfarb accepted
the invitation, and Cooper provided him with several
Gore-Tex tubes with the ePTFE structures that had been
found to be most effective as vascular grafts, in studies by
the other researchers. Dr. Goldfarb then implanted in
dog arteries the Gore-Tex tubes that Cooper provided,
observed that the material was indeed effective, and in
October 1974 filed a patent application on the effective
3 BARD PERIPHERAL v. WL GORE

Gore-Tex graft materials and this use, naming himself as
the inventor.
Gore had already filed a patent application on the ef-
fective Gore-Tex graft materials, with Peter Cooper as
inventor. Prosecution continued for twenty-eight years,
including a patent “interference” that lasted for eighteen
years, with two appeals to the Federal Circuit. On Au-
gust 20, 2002 the Patent and Trademark Office (“PTO”)
issued a patent to Dr. Goldfarb. In 2003 Goldfarb and his
then-assignee, the C.R. Bard Company, sued Gore for
patent infringement.
The record shows Gore’s extensive experience with
these Gore-Tex graft materials, experience that preceded
Dr. Goldfarb’s entry into Gore’s testing program, includ-
ing various prior art activities of record in the PTO. Dr.
Goldfarb acknowledged in the interference proceeding
that use of Gore-Tex ePTFE as a mammalian graft had
been known as early as 1970 or 1971, when Dr. Ben
Eiseman of the University of Colorado began testing
Gore-Tex vascular grafts. Brief for the Junior Party
David Goldfarb, Interference No. 101,100, PX 116.6818 at
6, in Bard v. Gore, No. CV 03-0597-PHX-MHM. Dr.
Goldfarb also acknowledged to the PTO that “[a]t about
the same time, Dr. Matsumoto in Tokyo, Japan, obtained
a sample of expanded PTFE tubing and implanted it in
dogs as a small diameter graft,” and “Matsumoto reported
a 100% success rate ….” Id. at 7. Dr. Matsumoto, of the
Department of Thoracic Surgery of the University of
Tokyo, published several scientific articles on this work,
e.g., Matsumoto et al., “Studies of Porous Polytetrafluoro-
ethylene as a Vascular Prosthesis: Application to Periph-
eral Arteries,” Artificial Organs, Vol 1, No. 1, p. 44 (1972).
Another Matsumoto publication, in Surgery, Vol. 74, No.
4, p. 519 (October 1973) states that “Gore-Tex tubes
manufactured by W. L. Gore Associates” were implanted
BARD PERIPHERAL v. WL GORE 4

in dogs for up to ten months. The Surgery article states
that after the implant period “the internal surface of the
grafts were visualized macroscopically and microscopi-
cally,” and includes photomicrographs of the Gore-Tex
tubes showing the fibrous and internodal structure that is
claimed in the Goldfarb patent. Figure 3 of the Surgery
article is a photomicrograph “of an expanded polytetra-
fluoroethylene prosthesis removed ten months after
operation. The neointima is very well developed and
firmly adherent to the inner surface”; properties that the
jury (and the PTO) was told were discovered by Dr. Gold-
farb. Figure 4 is a “microscopic picture of an expanded
polytetrafluoroethylene prosthesis removed 4.5 months
after operation. Fibroplasis is well formed through
pores”; these are all properties that the jury and the PTO
were told were discovered by Dr. Goldfarb.
In 1972, well before Dr. Goldfarb was first contacted
by the Gore employees, an internal memorandum written
by Cooper entitled “Who Is Doing What With GORE-TEX
Veins and Arteries and Other Experiments,” dated Au-
gust 15, 1972, reports experiments conducted by Dr. Jay
Volder of the University of Utah, using Gore-Tex tubes
provided by Cooper, for vascular grafts in sheep:
4. University of Utah: Dr. Jay Volder - Jugu-
lar Vein, Carotid Arteries 5.3 and 9.9 mm. On Dr.
Kolff's Staff.

10 sheep each. Arteries are perfect. Some veins
clotted in a few weeks. When smaller, more po-
rous tubes were used as veins, they did not clot
but the intima "was not well adhered". Do not
know if higher flow rates or more porous structure
was cause of better success - could be both. We
will supply even more highly expanded 5 mm ma-
5 BARD PERIPHERAL v. WL GORE

terial, .2-.3 gms/cc compared to .53 which he used.
He plans to write a paper.
PX 116.17703, Bard v. Gore, No. CV 03-0597-PHX-MHM.
A trip report by Cooper dated November 3, 1972 states:
Dr. Volder has had excellent success in GORE-
TEX arteries and veins. The artery work has
been perfect using two densities of GORE-TEX:
the vein work only when the lower of the two den-
sities was used. Our letter to Dr. Volder describ-
ing the properties of the two tubes he has used is
in the University of Utah file.
Id., PX 116.17766. Dr. Volder’s work was published, “A-V
Shunts Created In New Ways,” Transactions of the Amer.
Soc. for Artificial Internal Organs, Vol. 20, p. 38 (Novem-
ber 1973), in which Dr. Volder described the structure and
properties of the Gore-Tex materials, and stated: "It is
believed that by increasing the average pore size of the
material, at the moment 5μ [microns], it will be possible
to accelerate the process of tissue infiltration and the
development of capillaries." Id. at 39.
Several other surgeons had previously tested the
Gore-Tex material as vascular grafts in dogs. In Novem-
ber 1972 Cooper provided Gore-Tex tubes of various
fibrous structures to Dr. William J. Sharp at the Akron
City Hospital and Dr. Glenn Kelly at the University of
Colorado Medical School. This activity is summarized in
Cooper v. Goldfarb, 154 F.3d 1321 (Fed. Cir. 1998) (“Coo-
per I”), the court stating that “In the spring of 1973, the
researchers participating in the three-structure experi-
ment began obtaining results.” Id. at 1324. The court
stated that in “a letter dated April 2, 1973, Dr. Sharp
informed Cooper that two of his grafts had been success-
ful.” Id. at 1324. Dr. Sharp described the characteristics
of fibroblastic infiltration and the nature of the neointima
BARD PERIPHERAL v. WL GORE 6

as viewed by microscope – characteristics that Dr. Gold-
farb stated were his discovery. Dr. Sharp provided his
photomicrographs to Mr. Cooper, and wrote:
RESULTS: Group I-416-10312-3 (.31g/cc). There
were a total of four grafts inserted into the dog's
carotid artery. Two remained patent in the same
animal for 21 days and 2 clotted before 21 days in
another animal. The low power microscopic views
demonstrate excellent fibroblastic infiltration of
the wall of the graft (Figure # 1) and a fairly thick,
but well attached neointima (Figure # 2). There
was only moderate reaction externally. (Figure #
3).
PX 116.17829, Bard v. Gore, No. CV 03-0597-PHX-MHM.
This court also reviewed Dr. Kelly’s studies, at the
University of Colorado, of various Gore-Tex materials as
vascular grafts in dogs, in which Dr. Kelly identified the
structures that were most effective. The court summa-
rized Dr. Kelly’s histological studies and microscopic
investigation of tissue ingrowth – characteristics that Dr.
Goldfarb claimed as his discovery. The Federal Circuit
summarized this work:
On April 17, 1973, Dr. Kelly sent Cooper four his-
tological slides of harvested grafts. Cooper testi-
fied that he reviewed the slides under a
microscope on April 22, 1973, and then photo-
graphed the slides, measured the fibril lengths
shown, and recorded his conclusions in his labora-
tory notebook. The first page of Cooper's notebook
contains a photomicrograph of a harvested graft
along with a notation indicating that the graft
was submitted by Dr. Kelly. The page also con-
tains a sticker with a 100 micron scale indicated.
7 BARD PERIPHERAL v. WL GORE

The following is written above the photomicro-
graph:
I want to maximize the amount and rate of
tissue ingrowth into Gore-Tex vascular pros-
thetics. Two qualities are necessary. 1. Uni-
form “poker chip” structure and 2. a minimal
“skin” at both the O.D. and I.D. surfaces.
Tissue has invaded Gore-Tex where the
nodes are approx. 10-30 microns thick and
with most separations between nodes at about
50-100 microns. Photo # 1. Other structures
having approximately 5-10 micron node di-
mensions and spaces from about 5-30 micron
do not appear to allow ingrowth-Photo # 2.
Cooper I, 154 F.3d at 1325. This court referred to Kelly’s
photomicrographs showing tissue ingrowth and inter-
nodal separation, yet Dr. Goldfarb, before the jury, ac-
cused Cooper of stealing Goldfarb’s photomicrographs
showing tissue ingrowth and internodal separation. By
the time of trial, Cooper had died, leaving Dr. Goldfarb
uncontradicted.
Dr. Goldfarb had told the PTO that it was “well
known in 1972 and before” that for tissue ingrowth in a
vascular graft, the internodal distance must be “at least
the size of a fibroblast or red blood cell,” that is, “in the
range of 5-6 microns,” so that the cells can infiltrate the
ePTFE pores. Goldfarb Decl., April 26, 1984 at ¶¶4-6; PX
116.9772, Bard v. Gore, No. CV 03-0597-PHX-MHM. This
is the internodal distance that all of the investigators who
preceded Goldfarb had observed to characterize the effec-
tive Gore-Tex graft materials. Yet at the infringement
trial the jury was told that it was Goldfarb who discov-
ered that Gore-Tex ePTFE had these properties and
performance.
BARD PERIPHERAL v. WL GORE 8

Dr. Goldfarb conceded at the infringement trial that
he knew nothing about Gore-Tex or ePTFE before the
Gore employees suggested that he participate in the test
program for these materials:
Q. Dr. Goldfarb, do you agree that the idea of
trying out ePTFE tubes as an artificial vascular
prosthesis was something that was first suggested
to you by two Gore employees, Peter Cooper and
Richard Mendenhall?

A. Yes.

Q. Before the Gore employees told you about
trying ePTFE as a vascular prosthesis, you didn't
know anything about that material, correct?

A. That's correct.

Q. And the first suggestion from Gore came in
about February 1973 I think you said; is that
right?

A. That's correct.
Trial Tr. 677:20-678:3, Nov. 8, 2007. The record contains
the following letter from Peter Cooper dated February 14,
1973, written after this initial contact:
9 BARD PERIPHERAL v. WL GORE

Dear Dr. Goldfarb,
Enclosed are a variety of sizes of GORE-TEX
tubes for your animal artery prosthetic experi-
ments. I have also enclosed a short length of tub-
ing with a small flange at each end and wonder if
an anastomosis technique where a similar flange
if formed on the end of the artery and butted
against the GORE-TEX prosthetic might not be a
better technique than suturing the butt ends to-
gether.
We want to do whatever we can to help you
with your project. When additional materials or
further information is needed, do not hesitate to
let us know.

Very truly yours,
/s/ Peter B. Cooper
Plant Manager
PX 116.13350, Bard v. Gore, No. CV 03-0597-P/-IX-MHM.
On April 19, 1973 Cooper sent Dr. Goldfarb additional
Gore-Tex tubes, with a letter stating that these materials
“represent the latest attempt to achieve satisfactory
patency rates in small artery prosthetics,” based on the
ongoing work of the other surgeons in the project. The
Federal Circuit summarized Dr. Goldfarb’s participation:
Following a meeting with Cooper and Mendenhall
in early February, Goldfarb set up an animal re-
search facility at AHI. Over the next several
months, Cooper periodically sent Goldfarb a vari-
ety of expanded PTFE tubes to use in his re-
search. Using the samples provided by Cooper,
Goldfarb conducted a series of experiments con-
sisting of 21 grafts implanted in the left and right
carotid and left and right femoral arteries of seven
BARD PERIPHERAL v. WL GORE 10

dogs. . . . Goldfarb began obtaining results from
these experiments towards the end of May of
1973.
Cooper I, 154 F.3d at 1325-26.
Dr. Goldfarb obtained results that conformed to the
results that had been achieved by the other surgeons, and
then filed a patent application on the Gore-Tex materials
that he had received from the Gore employees. He
claimed, for use as vascular grafts, the materials that he
had been provided by Gore for this purpose. He claimed
these materials by the tubular shape and size and density
of the materials that he had been provided, and by the
internodal structure of the materials that he had been
provided and that he, and others before him, had observed
to provide effective tissue ingrowth.
After eighteen years of interference proceedings, the
PTO granted the patent to Goldfarb, although the PTO
found and the Federal Circuit affirmed that Cooper was
the first to conceive of the invention, including the speci-
fied internodal structure, and held that Goldfarb’s work
“inures to Cooper’s benefit”:
Applying the Genentech test to these facts, we
hold that Goldfarb's recognition that the 2-73 RF
graft from the Lot 459-04133-9 material was suit-
able for use as a vascular implant inures to Coo-
per's benefit.
Cooper v. Goldfarb, 240 F.3d 1378, 1385 (Fed. Cir. 2001)
(“Cooper II”). Goldfarb had sold his rights to Interna-
tional Medical Products and Research Associates
(“IMPRA”), a company that had been formed by former
Gore employees, and that was sued by Gore for infringe-
ment of trade secrets. Goldfarb later recovered his patent
rights, and sold them to Bard. Goldfarb and Bard then
11 BARD PERIPHERAL v. WL GORE

sued Gore for infringement. The jury found infringement
by Gore’s entire line of Gore-Tex graft human prostheses.
The infringement trial was fraught with errors of law,
misstatements of fact, and confessed perjury by Dan
Detton, a witness in this case to whose testimony my
colleagues on this panel give weight. Mr. Detton admit-
ted to perjury concerning Goldfarb’s activities in testi-
mony that Detton gave in the trade secret litigation
between Gore and IMPRA, and Detton admitted that his
false affidavits had been filed in the Patent Office to
support Dr. Goldfarb’s patent application. At the in-
fringement trial, after Mr. Detton had been called by Gore
to testify as to various aspects of the relationship between
Gore and Dr. Goldfarb, Gore’s counsel introduced Detton’s
affidavits and brought out Mr. Detton’s prior false testi-
mony:
Counsel: Is this the second affidavit that you
signed in that meeting in January of 1976?

Mr. Detton. Yes, it’s one of the two.

Counsel: If you would turn to paragraph 15,
please, of Exhibit 3220 [the second affidavit]. And
it’s stated there that prior to the applicant’s dis-
closure of the structure defined in the above-
identified application, affiant, that’s you, was un-
aware of any other vascular structure which in-
corporated a thin wall (in the range of thicknesses
between 0.2 and 0.8 millimeters). Do you see that?

Mr. Detton: Yes.
BARD PERIPHERAL v. WL GORE 12

Counsel: Is that a factually accurate statement,
Mr. Detton?

Mr. Detton: No, that would be inaccurate. That’s
contradictory to the findings that we were having,
and the results.
Bard v. Gore, No. CV03-0579-PHX-MHM, Examination of
D. Detton, Trans. 1897:19-1898:6 (Nov. 27, 2007). Bard’s
counsel, in turn, also addressed the falsity of Mr. Detton’s
prior testimony:
Counsel: You were asked, "As far as I can tell --
inform me if I'm correct and tell me if I'm wrong --
the specifications for the next 64 graft verification
experiments were set forth by Dr. Goldfarb about
mid-June of 1973; is that about correct?"
Your answer, "Correct."
Is your testimony there knowingly false or truth-
ful?

Mr. Detton: No, that was inaccurate testimony.

Counsel: Was it knowingly false?

Mr. Detton: Yes, it was.

Counsel: Perjury?

Mr. Detton: Yes, it was.
Bard v. Gore, No. CV03-0579-PHX-MHM, Trans. 1915:5-
15 (Nov. 27, 2007).
13 BARD PERIPHERAL v. WL GORE

The panel majority complains about my reference to
Mr. Detton’s admissions of perjury, stating that it is not
our appellate role to determine credibility. I am not
determining Mr. Detton’s credibility: he did that for us.
He admitted that he lied in the testimony that he gave in
support of the Gore ex-employees who formed the com-
pany IMPRA to which Goldfarb initially assigned his
patent rights, and who were sued by Gore for misappro-
priation of trade secrets. He admitted that he lied in the
affidavits that were filed with the patent examiner and
that achieved allowance of the Goldfarb application. This
is not an appellate assessment of credibility – there is no
credibility to assess.
The panel majority also misstates that the Matsumoto
and Volder articles were “fairly considered” as “prior art
in this appeal,” for the jury was told that the patent
examiner had fully considered these articles and had
granted the patent in light thereof. It is now admitted
that the Detton affidavits, filed in the PTO to distinguish
these articles, were perjured; Detton testified that he had
told Dr. Goldfarb and Goldfarb’s counsel that he wanted
to withdraw the affidavits, and they refused.
Goldfarb’s counsel used the cross-examination of Det-
ton as a platform for misstating to the jury that “the
Federal Circuit and the patent office determined Dr.
Goldfarb had come up with this invention,” for both the
Federal Circuit and the Patent Office had determined
that Cooper, not Goldfarb, had conceived the invention.
Such misstatements to the jury are typified by this ex-
change:
Counsel: The date up there at the top is 22-10-73.
Do you understand that to be October 22, 1973?

Mr. Detton: I would assume.
BARD PERIPHERAL v. WL GORE 14

Counsel: And this is, just so we orient ourselves,
some four or five months after the Federal Circuit
and the patent office determined Dr. Goldfarb had
come up with this invention.

Trial Tr. 1958:17-23, Nov. 27. 2007.
Dr. Goldfarb also told the jury that the Federal Cir-
cuit held that the Patent Office “affirmed the patent” –
although neither had done so.
Counsel: Okay. And this is the March 2001 opin-
ion that -- what was the impact of this opinion?
This is the federal – second Federal Circuit opin-
ion, Dr. Goldfarb. What's the impact of this opin-
ion?

Dr. Goldfarb: It says that judgment -- that the
decision made by the patent office affirmed the
patent.

Trial Tr. 707:17-22, Nov. 8. 2007. In a travesty of flawed
proceedings, in which almost all of the witnesses were
dead, unwilling, or hostile, misstatements of law and fact
abound. 1
As a matter of law, Dr. Goldfarb cannot deprive Gore
of the invention Gore possessed and that was known to
Gore and published by others before Goldfarb entered the
scene. A person who tests a material provided to him for
1 I take note of the panel majority’s observation
that this saga has overtones of a Shakespearian tragedy,
for these events indeed illustrate that "to be honest, as
this world goes, is to be one man picked out of ten thou-
sand." W. Shakespeare, Hamlet, Act II, sc. ii.
15 BARD PERIPHERAL v. WL GORE

testing, in the test for which the material was provided,
does not become the inventor of the material and the use
for which he tested it, and does not thereby become the
owner of the material with the sole right to the use he
was invited to test. As stated in Shatterproof Glass Corp.
v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir.
1985), “An inventor ‘may use the services, ideas, and aid
of others in the process of perfecting his invention without
losing his right to a patent.’” (quoting Hobbs v. U.S.
Atomic Energy Comm'n, 451 F.2d 849, 864 (5th
Cir.1971)).
The panel majority states that Dr. Goldfarb invented
“a homogeneously porous vascular prosthesis” with “small
nodes interconnected by extremely fine fibrils to form an
open superstructure which will allow uniform, controlled
transmural cellular ingrowth and thereby assure the
establishment and maintenance of a thin, viable neoin-
tima as well as firm structural integration of the graft
into the body.” Maj. Op. at 4. That is incorrect; the
product that the panel majority describes is the Gore-Tex
product that the Gore employees invited Dr. Goldfarb to
test as a vascular prosthesis; it was not invented, de-
signed, created, or produced by Goldfarb. The Gore
employees provided Goldfarb with known samples having
small nodes interconnected with fibrils, of the density and
wall thickness and internodal distance of the samples
that others had previously successfully tested as graft
prostheses. They were not Goldfarb’s invention.
The panel majority also misstates, or misunderstands,
the findings of the interference, and the prior Federal
Circuit rulings. This court held that Cooper had con-
ceived the entire invention before, not after, Goldfarb’s
purported reduction to practice. This court found that
Cooper had provided Goldfarb with the material that he
tested, and that by “letter to Goldfarb accompanying the
BARD PERIPHERAL v. WL GORE 16

Lot 459-04133-9 material, Cooper described the material
as represent[ing] the latest attempt to achieve satisfac-
tory patency rates in small artery prosthetics, indicating
that he expected the material to be suitable as a vascular
graft.” Cooper II, 240 F.3d at 1381. The court “h[e]ld that
Goldfarb's recognition that the 2-73 RF graft from the Lot
459-04133-9 material was suitable for use as a vascular
implant inures to Cooper's benefit.” Id. at 1385. The
court’s inquiry into “whether Cooper can obtain the bene-
fit of Goldfarb's knowledge of the fibril lengths of the
material Goldfarb tested” was directed to the interference
contest between Cooper and Goldfarb, for it was undis-
puted that Cooper had knowledge of the structure of the
successful products before Goldfarb tested the successful
products.
Thus this court held in Cooper I that Cooper had con-
ceived the invention, including the fibril length limitation,
before Goldfarb reduced the invention to practice. 154
F.3d at 1326. The letter from Dr. Sharp dated April 2,
1973 related to the Lot 459-04133-9 material, and Coo-
per’s letter to Dr. Goldfarb on April 19, 1973 accompanied
the Lot 459-04133-9 material and described it as “repre-
sent[ing] the latest attempt to achieve satisfactory
patency rates in small artery prosthetics.” Cooper II, 240
F.3d at 1384. This was the material that Dr. Goldfarb
patented as his own, although pictures of the fibrous
structure of the Gore-Tex grafts had been made known to
Cooper by Dr. Sharp and Dr. Allen, and had been pub-
lished by Dr. Matsumoto and Dr. Volder.
Whatever Dr. Goldfarb’s contribution, he did not in-
vent the effective graft materials. The “microscopic
superstructure of uniformly distributed nodes intercon-
nected by fibrils,” as the product is described by the panel
majority, was the known structure of the Gore-Tex mate-
rials that others had already successfully tested as grafts
17 BARD PERIPHERAL v. WL GORE

at Gore’s request. The “uniform, controlled transmural
cellular ingrowth and thereby assure the establishment
and maintenance of a thin, viable neointima as well as
firm structural integration of the graft into the body,” was
recorded in Cooper’s laboratory notebook before Goldfarb
was first contacted by Cooper and Mendenhall. In Cooper
II the court observed that the graft identified as 2-73 RF
had been successfully tested before it was given to Gold-
farb, and that Cooper “expected the material to be suit-
able as a vascular graft” and “intended that Goldfarb use
the [material] for vascular grafts, and to that extent
Goldfarb’s experiments could be said to have been per-
formed at Cooper’s request.” 240 F.3d at 1384.
At the infringement trial, Gore raised the separate de-
fense to the infringement charge, that even if the Gold-
farb patent is not now subject to challenge, Gore’s
employee Cooper, who was acknowledged to have con-
ceived the invention, was at least a “joint inventor” in
terms of 35 U.S.C. §116. The panel majority cites several
cases to negate any access to joint inventorship, although
this court had already found that Cooper conceived the
invention that Goldfarb patented. Precedent illustrates
that “inventorship” and “joint invention” have been dis-
puted in a variety of situations, although none reached a
result that entirely excluded the person who conceived the
invention that was patented. I review the cases relied on
by the panel majority to support the exclusion of Cooper
as an inventor:
In Nartron Corp. v. Schukra U.S.A., Inc., 558 F.3d
1352 (Fed. Cir. 2009), the question was whether an addi-
tional employee of the patentee should have been joined
as an additional inventor; it was held that the decision of
joinder depended on whether the additional employee
made a significant contribution; but the persons who
conceived the invention were not thereby excluded. In Eli
BARD PERIPHERAL v. WL GORE 18

Lilly & Co. v. Aradigm Corp., 376 F.3d 1352 (Fed. Cir.
2004), the question was whether the information dis-
cussed during various technical meetings on possible
collaboration led to joint invention; it was held that it
depended on which ideas were discussed and their rela-
tion to the patented subject matter. In University of
Pittsburgh v. Hedrick, 573 F.3d 1290 (Fed. Cir. 2009), the
question was whether a research assistant was a joint
inventor along with the senior scientists; the court held
that the assistant was not a joint inventor because the
invention had already been conceived. The court recog-
nized the rule that invention turns on conception, not
reduction to practice. In Fina Oil & Chem. Co. v. Ewen,
123 F.3d 1466, 1473 (Fed. Cir. 1997), the court explained
that 35 U.S.C. §116 "sets no explicit lower limit on the
quantum or quality of inventive contribution required for
a person to qualify as a joint inventor. Rather, a joint
invention is simply the product of a collaboration between
two or more persons working together to solve the prob-
lem addressed." In Pannu v. Iolab Corp.,155 F.3d 1344
(Fed. Cir. 1998), the patent application was already on file
when the claimant to joint inventorship status appeared
as a possible licensee; the invention had already been
conceived. In Hess v. Advanced Cardiovascular Sys., 106
F.3d 976 (Fed. Cir. 1997), doctors who were working on a
new catheter obtained technical advice and samples of
material from a purveyor of Raytheon tubing; the court
held that this did not convert the adviser into a joint
inventor of the catheter.
None of these determinations rejecting “joint inven-
tion” tracks the facts herein. No precedent holds, or
suggests, that a person who tests a material provided by
someone else, for the use for which the material was
provided, becomes the sole inventor of the material he
was provided and the sole inventor of the use for which he
19 BARD PERIPHERAL v. WL GORE

was invited to test the material provided. The cases cited
by the panel majority support Gore’s position, not Gold-
farb’s, for in all cases the person who conceived the inven-
tion was an inventor, whether or not other persons had
also contributed sufficiently to be included in inventor-
ship.
At the infringement trial, the jury found that Cooper
and Goldfarb were not “joint inventors,” apparently
because of Goldfarb’s testimony that they did not have an
“open line of communication during . . . their inventive
effort,” as the district court instructed the jury. Jury
Instr. #25, Doc. 769-2, p. 40-41 (“Persons may be joint or
co-inventors even though they do not physically work
together, but they must have some open line of communi-
cation during or at approximately the time of their inven-
tive effort.”). I take note that witness Dan Detton, whose
direct supervisor was Peter Cooper, testified that he was
assigned to visit Dr. Goldfarb weekly during this work.
The jury was told, over and over, that the Federal
Circuit had decided that Dr. Goldfarb was the sole inven-
tor (although the Federal Circuit found that Cooper, not
Goldfarb, conceived the invention); that Cooper and
Goldfarb did not communicate; and other aspects that
Cooper, in death, could not contradict.
Whether or not there was some form of joint invention
that could include Goldfarb, Gore cannot be excluded from
the right to continue to do that which it disclosed to
Goldfarb and had previously been published by Matsu-
moto and Volder. Even on Goldfarb’s theory that he made
useful observations, it has been clear since General Elec-
tric Co. v. Jewel Incandescent Lamp Co., 326 U.S. 242,
249 (1945), that “It is not invention to perceive that the
product which others had discovered had qualities they
failed to detect.” See In re Kubin, 561 F.3d 1351, 1357
BARD PERIPHERAL v. WL GORE 20

(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).
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 chal-
lenged, even in the conceded perjured testimony, and
totally 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 funda-
mental premises 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 rela-
tionships.
My colleagues, applying these flawed rulings, affirm
that Gore willfully infringed the Goldfarb patent on the
product that Gore invented, developed, and commercial-
ized. My colleagues hold that Bard, who purchased
Goldfarb’s rights, is entitled to all of Gore’s profits on all
Gore-Tex graft materials. Yet the entire history is per-
meated by errors of fact and law, lies, inconsistencies, and
injustice. In Shatterproof Glass, 758 F.2d at 626, this
court stated that “If prejudicial error occurred, or if the
verdict is against the clear weight of the evidence, as an
alternative to judgment n.o.v. a new trial may be granted,
in the discretion of the trial judge.” It is apparent that
“the verdict is against the weight of the evidence, that the
damages are excessive, or that, for other reasons, the trial
was not fair to the party moving.” Montgomery Ward &
Co. v. Duncan, 311 U.S. 243, 251 (1940). See Fairmont
21 BARD PERIPHERAL v. WL GORE

Glass Works v. Cub Fork Coal Co., 287 U.S. 474 (1933) (a
new trial should be granted when justice requires). At a
minimum a new trial is required, lest we “make a scare-
crow of the law." 2 From the panel majority’s ratification
of this insult to judicial process, I respectfully dissent.

2 We must not make a scarecrow of the law,
Setting it up to fear the birds of prey,
And let it keep one shape, till custom make it
Their perch and not their terror.
W. Shakespeare, Measure for Measure, Act II, sc. ii.