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Reduction to Practice Cannot Be Established Nunc Pro Tunc

March 02, 2001

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Last Month at the Federal Circuit - April 2001

Judges: Schall (author), Clevenger, and Rader

In Cooper v. Goldfarb, No. 00-1046 (Fed. Cir. Mar. 2, 2001), the Federal Circuit affirmed the Board’s decision that work by David Goldfarb did not inure to the benefit of Peter Cooper, entitling Goldfarb to priority.

The subject matter at issue concerned an artificial vascular graft made of expanded polytetrafluoroethylene (“PTFE”). The process of expanding or stretching PTFE results in a material having a microstructure consisting of solid PTFE “nodes” interconnected by a network of tendril-like “fibrils.” Research into the use of expanded PTFE as a material for fabricating vascular grafts began in 1972. Peter Cooper, then a plant manager for W.L. Gore & Associates, initiated and managed an experimental investigation on the suitability of expanded PTFE as a graft material. In connection with this investigation, Cooper sent expanded PTFE graft samples to a number of surgical researchers throughout the country for implantation and testing. By May 1973, Cooper had concluded, based on the preliminary results of this investigation, that expanded PTFE could be successfully used as a vascular graft material.

Goldfarb, then at the Arizona Heart Institute, was among those who received grafts from Cooper for testing. Using samples provided by Cooper, Goldfarb conducted a series of experiments involving animal subjects that concluded in June 1973. One of the grafts that was surgically implanted by Goldfarb remained unobstructed by clots and allowed blood to flow in the animal subject for twenty-one days, satisfying the investigational criteria for a successful graft.

In September 1983, the Board declared an interference between patent applications filed, respectively, by Cooper, the senior party, and Goldfarb, the junior party, claiming an artificial vascular graft made from expanded PTFE. Particular to the interference count was the length of the fibrils. The interference proceeding before the Board extended over a twelve-year period. On October 18, 1995, the Board issued its final decision, concluding that Goldfarb had reduced the invention to practice by July 1973. Because Cooper, according to the Board, had failed to establish an earlier reduction to practice and diligence, the Board awarded priority to Goldfarb. This decision was affirmed by the Federal Circuit in Cooper v. Goldfarb, 154 F.3d 1321 (Fed. Cir. 1998) (“Cooper I”), but the Court remanded the case to the Board because the Board had failed to consider whether Goldfarb’s work inured to the benefit of Cooper. On remand, the Board determined that the relationship between Cooper and Goldfarb was such that Goldfarb’s work did not inure to Cooper’s benefit.

On appeal, Cooper argued that the Board had erred by (1) placing too much weight on the fact that he had not conceived the invention when he sent the grafts to Goldfarb for testing, and (2) determining that the relationship between Goldfarb and him did not support the inurement claim. Regarding the first issue, the Federal Circuit agreed with Cooper, holding that it is not required, for an inurement claim, that the inventor have conceived the invention before he asks another person to test the material relied upon to establish reduction to practice.

Regarding the second issue, however, the Federal Circuit agreed with the Board, holding that the relationship between Cooper and Goldfarb did not support an inurement claim. Cooper argued that too much emphasis was placed on his relationship with Goldfarb, while the fact that Goldfarb was working at Cooper’s request when he reduced the invention to practice was being overlooked. In short, Cooper argued that the Board had erred in finding no inurement merely because he did not have a right to control Goldfarb’s work.

The Court noted that to establish reduction to practice, Cooper must prove that he made an embodiment of his invention that met all of the limitations of the interference count. Thus, in this case, Cooper had to establish that he had made the expanded PTFE material having fibril lengths within the scope of the interference count and determined that the material would be useful as a vascular graft. Because Cooper could establish neither of these, he then had to rely on the benefit of Goldfarb’s work.

In analyzing whether Goldfarb’s knowledge of the fiber lengths of the tested material inured to the benefit of Cooper, the Federal Circuit considered (1) whether Cooper had conceived the fibrillength limitation of the interference count, (2) whether Cooper had an expectation that the expanded PTFE material that he furnished to Goldfarb had the required fibril lengths, and (3) whether Cooper submitted the material to Goldfarb for testing to determine whether it had the required fibril lengths. While the Court found that Cooper had conceived of the fibril-length limitation, it held that Cooper had set forth no evidence of communication to Goldfarb indicating that the material had been submitted to Goldfarb for a determination of its fibril length. The Court found instead that Cooper was focusing on the porosity of the material, not its fibril length. Thus, the Federal Circuit held that Cooper’s failure to convey any information or requests regarding fibril length prevented Goldfarb’s determination of the fibril lengths of the material from inuring to Cooper’s benefit.