Free Response - District Court of Arizona - Arizona

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William J. Maledon, No. 003670 Brett L. Dunkelman, No. 006740 Osborn Maledon, P.A. 2929 North Central Avenue Suite 2100 Phoenix, Arizona 85012-2794 (602) 640-9000 [email protected] [email protected] David H. Pfeffer Arnold I. Rady James W. Gould Morgan & Finnegan, LLP 3 World Financial Center New York, NY 10281-2101 (212) 415-8700 (212) 415-8701 John S. Campbell W. L. Gore & Associates, Inc. 551 Paper Mill Road Newark, Delaware 19714 Attorneys for W. L. Gore & Associates, Inc. UNITED STATES DISTRICT COURT FOR THE DISTRICT OF ARIZONA Bard Peripheral Vascular, Inc., and David Goldfarb, M.D., Plaintiffs, v. W. L. Gore & Associates, Inc., Defendant. ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) No.: CV-03-0597-PHX-MHM GORE'S RESPONSE TO PLAINTIFFS' SUBMISSION OF SUPPLEMENTAL RELEVANT AUTHORITY

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W. L. Gore & Associates, Inc., Counterclaimant, v. Bard Peripheral Vascular, Inc., David Goldfarb, M.D., and C. R. Bard, Inc., Counterdefendants.

Case 2:03-cv-00597-MHM

Document 828

Filed 06/26/2008

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Plaintiffs' reliance on the recent Scanner Technologies decision* is wholly misplaced. In Scanner Technologies, the applicant's attorney told the PTO that he had made a "rigid comparison" of the accused CyberSTEREO system with the claims of the application. That comparison had in fact been made by comparing the claims with the CyberSTEREO product literature. The product literature used had been submitted to the PTO and the accompanying claim charts expressly referred to that literature. The Federal Circuit reversed because the district court had mistakenly construed the term "rigid comparison" to require an actual physical inspection of the product, rather than an inspection of the product literature. The Federal Circuit determined that the term "rigid inspection" was susceptible of meaning something other than a physical inspection. Since there had been a comparison, albeit with the product literature, the statement to the PTO was not false or misleading and therefore not material. See the copy of the decision appended to plaintiffs' submission at pages 6-8. In short, Scanner Technologies dealt with a situation in which a reasonable interpretation of the language used by the applicant's attorney was that his submission was truthful. There is no such issue of interpretation in the case at bar. For example, when Dr. Baker testified that paragraph 6 of his affidavit was incorrect, there is no question that Dr. Goldfarb and his attorneys continued to rely on the affidavit without informing the PTO of Dr. Baker's repudiation. And when Dr. Goldfarb and his attorneys misled the PTO by not revealing Dr. Volder's close connections with Impra or his claims to inventorship, there was no language used that the Court could interpret in some fashion to show that the information was not withheld.
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Scanner Technologies Corp. v. ICOS Vision Systems Corp., N.V., ___ F.3d ___; 2008 U.S. App. LEXIS 12914; 2008 WL 2468487 (Fed. Cir. June 19, 2008).
Case 2:03-cv-00597-MHM Document 828 Filed 06/26/2008 Page 2 of 5

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There is, however, one aspect of the Scanner Technologies decision that is instructive in this case. That deals with the advisory verdict stipulation also discussed at the June 11 hearing. Plaintiffs' counsel, Mr. Grant, argued that the Court could not lawfully recognize the parties' stipulation that the jury verdict on "obviousness" was strictly advisory. Tr. of 6/11/08 Hearing at pp. 130-132. In Scanner Technologies, the Federal Circuit held that "parties can stipulate to almost anything but jurisdiction" (page 12 of decision annexed to Plaintiffs' submission). The parties' stipulation here as to an advisory verdict is clearly not jurisdictional and therefore should be recognized and implemented by the Court.

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CV-03-0597-PHX-MHM

DATED this 26th day of June, 2008

OSBORN MALEDON, P.A. s/Brett L. Dunkelman Brett L. Dunkelman William J. Maledon 2929 North Central Avenue Post Office Box 36379 Phoenix, Arizona 85067-6379 David H. Pfeffer Arnold I. Rady James W. Gould Morgan & Finnegan, L.L.P. 3 World Financial Center New York, New York 10281-2101

Case 2:03-cv-00597-MHM

Document 828

Filed 06/26/2008

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John S. Campbell W. L. Gore & Associates, Inc. 551 Paper Mill Road Newark, Delaware 19714 Attorneys for W. L. Gore & Associates, Inc.

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CV-03-0597-PHX-MHM

Case 2:03-cv-00597-MHM

Document 828

Filed 06/26/2008

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CERTIFICATE OF SERVICE I hereby certify that on June 26, 2008, I electronically transmitted the attached document to the Clerk's Office using the CM/ECF System for filing and transmittal of a Notice of Electronic Filing to the CM/ECF registrants

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s/Susanne Wedemeyer

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CV-03-0597-PHX-MHM

Case 2:03-cv-00597-MHM

Document 828

Filed 06/26/2008

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