In view of the recent petition for cert. filed by W. L. Gore, asking the Supreme Court to review the standards for joint inventorship, the February panel decision in Bard Peripheral Vascular, Inc. v. W. L. Gore & Assoc., Inc., 670 F.3d 1171 (Fed. Cir. 2012) just got a lot more interesting. The Fed. Cir. affirmed the panel decision en banc in June, (682 F.3d 1003), but did not disturb the panel’s 3/2 finding that the claimed PTFE (Gore-Tex®) vascular grafts were a sole, not a joint invention. What is unusual about this decision is that the “maker”, Cooper – an employee of Gore – was found not to be an inventor, while the “tester” – one Goldfarb, a surgeon at the Arizona Heart Institute, was found to be the sole inventor. In other words, while acknowledging that Cooper actually had the invention in hand and sent it to Goldfarb for testing, Cooper was found to know so little about the tubes he sent, that Goldfarb’s discovery of the critical claim element not only was sufficient to make him a co-inventor, but his work did not “inure” to the benefit of Cooper to the extent that Cooper should be properly named as a co-inventor.
The grafts comprised expanded, porous PTFE having a microstructure consisting of nodes interconnected by fibrils, which permits tissue ingrowth, where an average distance between nodes is not less that about 6 microns. Now things get complicated.