Free Objection - District Court of Arizona - Arizona

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FENNEMORE CRAIG P.C. 3003 NORTH CENTRAL AVENUE, SUITE 2600 PHOENIX, ARIZONA 85012-2913 PHONE (602) 916-5000 ANDREW M. FEDERHAR (#006567) LATHAM & WATKINS LLP 885 THIRD AVENUE NEW YORK, NEW YORK 10022 STEVEN C. CHERNY 555 ELEVENTH STREET, N.W. WASHINGTON, DC 20004 MAXIMILIAN A. GRANT Attorneys for Plaintiffs/Counterdefendants Bard Peripheral Vascular, Inc. and David Goldfarb, M.D. and Counterdefendant C.R. Bard, Inc.

UNITED STATES DISTRICT COURT DISTRICT OF ARIZONA ) ) ) ) Plaintiffs, ) ) v. ) ) W.L. Gore & Associates, Inc., ) ) Defendant. _____________________________________) ) ) W.L. Gore & Associates, Inc., ) ) Counterclaimant, ) ) v. ) ) Bard Peripheral Vascular, Inc., ) David Goldfarb, M.D., and ) C.R. Bard, Inc. ) ) Counterdefendants. ) ) Bard Peripheral Vascular, Inc., and David Goldfarb, M.D., No. CV-03-0597-PHX-MHM

PLAINTIFFS'OBJECTION TO GORE' NOTICE OF (1) S CORRECTION OF STATEMENT MADE AT THE CONCLUSION OF THE HEARING OF 6/18/08 AND (2) [ALLEGEDLY] NEW AUTHORITY RELATING TO PLAINTIFFS'LACK OF STANDING

(Assigned to the Hon. Mary H. Murguia)

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I.

INTRODUCTION Gore' latest "new" authority actually published prior to the Court' June s s

11 hearing. Like Agrizap, (Gore' last submitted new authority, Doc. No. 812), Gore' s s submission of Mars, Inc. v. Coin Acceptors, Inc., 2008 U.S. App. LEXIS 11707 (Fed. Cir. June 2, 2008), further confirms Plaintiffs' argument and its holding is contrary to Gore' representation of the case. s Gore' post-trial treatment of the jury' general verdict on nonobviousness s s and damages confirms once again that Gore refuses to accept any "judgment" in Dr. Goldfarb' favor as "final."1 Although discussed at length at the June 11 hearing, Gore s cites no authority refuting the Federal Circuit' holding that Rule 50 motions, including s Gore' Standing JMOL, "apply only to binding jury verdicts." Perkin-Elmer Corp. v. s Computervision Corp., 732 F.2d 888, 895 n.5 (Fed. Cir. 1984). Gore' proffer of a case s that could have been considered at the last hearing has less to do with the legal argument on standing addressed by Gore' Rule 50(a) motion and more to do with its effort to s forestall entry of an appealable final judgment. Once the Court decides the question of inequitable conduct, the proper procedure is for the clerk to enter final judgment and for Gore to renew those arguments it preserved within ten days, including its Standing JMOL, (Doc. No. 652), as it sees fit. Perkin-Elmer, 732 F.2d at 895.
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Gore' absolute refusal to accept a final judgment in Dr. Goldfarb' favor was revealed s s during the 28-years of proceedings in the PTO: Q. [Dr. Goldfarb,] How many times had the patent office declared you the inventor? A. I guess roughly five times or so. Q. Dr. Goldfarb, ... what' your reaction to being questioned on all of these issues that were s decided by the patent office back in 1985 and through that long history? A. Well, it' very frustrating, because each time the patent is challenged, whether it be by s reconsideration, or appeal, or whatever, things we' heard in this courtroom, the patent ve office decided that I was the inventor. Through mechanisms of the law, the Gore company was allowed to try over and over again. And each decision, as I just said, was made in my favor. The same things were rehashed over and over again, and there was nothing new about the decision. It was made in my favor. (11/8/07 Tr. at 708:8-23; see also 12/12/07 Tr. at 4243:3-4245:19 (Court' questioning of s Mr. Green on the PTO' decisions and Federal Circuit' affirmances).) s s

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II.

OBJECTION Gore asserts that the standing argument set forth in its Rule 50(a) motion

"raises jurisdictional and standing issues," (Doc. No. 825 at 1), and that the recent Federal Circuit decision in Mars, Inc. v. Coin Acceptors, Inc., "reaffirms Gore' position s that the Amendment to the license does not give BPV Constitutional standing to sue." (Id. at 3.)2 Gore mischaracterizes both the law and the evidence. Gore continues to confuse the requirements necessary to assign title to a patent with those necessary to assign a patent license. By requirement of statute, 35 U.S.C. § 261

assignment of patent title (the Mars case) must be in writing.

("Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.").3 There is no such statute governing assigning licenses, and assignment of a license (this case) may be oral or implied-in-fact, regardless of whether it is later memorialized in writing. Waymark Corp. v. Porta Sys. Corp., 334 F.3d 1358, 1364 (Fed. Cir. 2003); Enzo APA & Son, Inc. v. Geapag A.G., 134 F.3d 1090, 1093 (Fed. Cir. 1998). Here there is a writing, (PX1476), amending BPV' exclusive license and s verifying its standing to sue in conjunction with the patent owner, Dr. Goldfarb.
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Rather than simply directing the Court' attention to the decision or submitting a copy, Gore s continues to improperly reargue its contentions under the guise of a submission of supplemental authority. See, e.g., United States v. Fowlie, 24 F.3d 1059, 1068 n.7 (9th Cir. 1994) (striking analysis included with supplemental authority); Seidman v. Paradise Valley Unified School Dist. No. 69, 327 F. Supp. 2d 1098, 1121 (D. Ariz. 2004) (refusing to consider argument included with supplemental authority). "A conveyance of legal title by the patentee can be made only of [1] the entire patent, [2] an undivided part or share of the entire patent, or [3] all rights under the patent in a specified geographical region of the United States." "A transfer of any of these is an assignment and vests the assignee with title in the patent, and a right to sue infringers," but any less of a transfer is not an assignment of legal title but a mere license giving the licensee no right to sue for infringement at law in the licensee' own name [unless s the patentee is joined]. Fieldturf, Inc. v. Southwest Rec. Indus., 235 F.Supp. 708, 727 (E.D. Ky. 2002) (quoting RiteHite Corp. v. Kelley Co., Inc., 56 F.3d 1538, 1551-1552 (Fed. Cir. 1995) (emphasis added and internal citations omitted), vac' in part, 357 F.3d 1266, 1269 (Fed. Cir. 2004) (reversing d finding of no standing based on failure of exclusive licensee with less than all substantial rights to join patentee, and remanding to determine if "exclusive licensee can cure [the] defect in standing by joining the patentee or the successor in title to the patentee"). Here, the exclusive licensee, BPV, sued in conjunction with the patentee, Dr. Goldfarb, from day 1.

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Mars adds nothing to the cases already cited on this point by Gore. Mars involves a defective written transfer of title that was termed a "Confirmation Agreement," not transfer of an exclusive license, as amended in the written "Agreement Amending License Agreement," as in this case. Mars is inapposite and Gore' posts verdict Rule 50(b) standing motion (if timely renewed) should fail. A. The Mars Case In Mars, the plaintiff owned the patent-in-suit when the complaint was filed in 1990 and undisputedly had standing. 2008 U.S. App. LEXIS 11707 at *3-4. In 1996, during the pendency of the lawsuit, Mars entered into an agreement transferring "its entire interest in the Covered Intellectual Property that relates to the business of the parties" to a wholly-owned subsidiary, Mars Electronics Inc. ("MEI"). Id. at *25. The Federal Circuit ruled that the 1996 agreement operated to transfer title in the patent-insuit from Mars to MEI such that "Mars lacked standing as of 1996." Id. at *26-27. In 2006, before entry of judgment, Mars entered into a purchase agreement with its subsidiary in which Mars purported to reacquire title to the patent-in-suit to correct the jurisdiction defect created in 1996. Id. at *7-8. The purchase agreement was not put in evidence and instead Mars relied on a later dated "Confirmation Agreement" to establish the transfer of title. The Confirmation Agreement stated: Mars and [MEI] do hereby acknowledge that Mars owns and retains the right to sue for past infringement of the Litigation Patents. To the extent that MEI may have or claim any rights in or to any past infringement of the Litigation Patents or any recovery therefor, upon the terms and subject to the conditions of the Purchase Agreement, MEI does hereby irrevocably assign all such rights to Mars. Id. at 27-28. The Federal Circuit found this language insufficient to transfer title back to Mars and correct the jurisdictional defect. It held that the first sentence of the above paragraph was not "a transfer itself." Id. at 29. It also determined that although the second sentence did constitute a transfer, the language was insufficient to confer standing because it was "an assignment of the right to sue for past infringement, not an assignment

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of title." Id. (emphasis added) ("We see no provision in the Confirmation Agreement that transfers the [patent-in-suit] back to Mars."). The Federal Circuit did not hold "that a ` confirmation' of a purported prior transfer, without the actual transfer agreement, is not sufficient to confer Constitutional standing upon a plaintiff to assert a patent infringement claim."4 (Doc. No. 825 at 1.) Rather, the Federal Circuit held that the patent holder Mars transferred title to its subsidiary MEI in 1996, and that the language used in the Confirmation Agreement that was intended to return patent title from MEI back to Mars was defective.5 As a result, that language failed to return patent title to Mars. Mars says nothing about transfer of an exclusive license and sheds no light on the (infirm) standing arguments Gore makes. B. This Case Gore' original Rule 50(a) motion on this point argued that a written s agreement, separately signed by C.R. Bard and transferring Bard' original exclusive s license agreement with Dr. Goldfarb to BPV, is necessary for standing. Gore' argument s is contrary to the law as well as the evidence presented to the Jury. First, Dr. Goldfarb (the patentee) was a plaintiff when the suit was filed, consistent with the patent law that empowers "patentees" to bring civil actions for infringement. 35 U.S.C. § 281. Second, at the time of filing, IMPRA/BPV was an exclusive licensee with less than "all substantial rights." An exclusive licensee that has been granted less than "all substantial rights" has standing to sue for infringement

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The "Confirmation Agreement" in Mars sought to memorialize a written transfer of title. That is fundamentally different from the 1997 Agreement Amending License Agreement between IMPRA/BPV, C.R. Bard and Dr. Goldfarb, which amended a prior exclusive license to BPV from C.R. Bard of the rights Bard licensed from Dr. Goldfarb, and memorialized the terms of the amended license agreement between Dr. Goldfarb and BPV. The Federal Circuit construed the 1996 agreement under Delaware law and the Confirmation Agreement under New York law because interpretation of patent assignment agreements is a matter of state contract law. Mars, 2008 U.S. App. LEXIS 11707 at *25 and 26-27.

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provided it joins the patentee.6 Abbott Lab. v. Diamedix Corp., 47 F.3d 1128, 1131 (Fed. Cir. 1995); 8 CHISUM ON PATENTS, § 21.03[2][c]. BPV and Dr. Goldfarb did precisely In contrast to a transfer of patent title, there is no

3 that by suing as co-plaintiffs.

4 requirement that exclusive licenses be created in writing; they can be written, oral or 5 implied licenses-in-fact. Waymark, 334 F.3d at 1364; Enzo, 134 F.3d at 1093. The 6 evidence at trial established: 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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? Dr. Goldfarb' 1980 license to C.R. Bard did not transfer all of his rights s because he retained "substantial rights," including the right to share in any damages recovered from enforcement or licensing of his patent. (PX4 § 5.3.) ? After C.R. Bard bought IMPRA in 1996: (i) it was merged with Bard' existing s vascular graft business; (ii) Bard transferred responsibility for the 1980 license to IMPRA; (iii) Bard confirmed the transfer of that exclusive license to IMPRA a the written February 2, 1997 "Agreement Amending License Agreement," and (iv) IMPRA assumed C.R. Bard' obligation to pay Dr. s Goldfarb' royalties. (11/16/07 Tr. at 1365, 1644-45, 1635-36, 1639-40; s PX191 at 1.) ? The written amendment of IMPRA/BPV' exclusive license was signed on s behalf of each of Dr. Goldfarb, IMPRA and C.R. Bard. Mr. McDermott (IMPRA' President) signed the agreement under the express authority of C.R. s Bard for both Bard and IMPRA/BPV. (PX191 at Preamble and § 3; 11/16/07 Tr. at 1644-47.) At the time the suit was filed BPV was indisputably an exclusive licensee ­ as established in writing by PX191, and by virtue of its assumption of licensee responsibilities and payment of royalties to Dr. Goldfarb ­ with less than "all substantial rights." Waymark Corp., 334 F.3d at 1364; Kalman v. The Berlyn Corp., 914 F.2d 1473, 1482 (Fed. Cir. 1991) (company acting as de facto licensee has standing to sue for infringement).

In contrast with the facts here, an exclusive licensee that obtains all substantial rights is sometimes termed a "virtual assignee" and under certain conditions a patent so licensed may be considered to have been assigned. Enzo, 134 F.3d at 1093. That is not the case here because the evidence established that Dr. Goldfarb retained "substantial rights" in his patent until January 30, 2007, when BPV acquired all right, title and interest in the Goldfarb Patent. (PX1476.)

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The Jury based its decision on the evidence showing that until January 2007 (when, in a writing, Dr. Goldfarb actually did assign title in his patent to BPV), Dr. Goldfarb owned the patent and BPV was nothing more than his licensee. There is no doubt that throughout the case Dr. Goldfarb had standing as the patentee and that BPV had standing as his exclusive licensee. BPV was not the assignee of title to the Goldfarb patent when the Complaint was filed. Instead, consistent with the evidence, BPV asserted that it was an exclusive licensee of the patent owned by Dr. Goldfarb and Dr. Goldfarb retained substantial rights. Because no oral transfer of title is alleged in this case, Mars is

inapposite, and Gore' arguments to the contrary misstate the law and invite error.7 s III. CONCLUSION Over 34 years ago, Gore took Dr. Goldfarb' invention and filed a patent s application in the name of its nominee, Peter Cooper, claiming Dr. Goldfarb' research as s Gore' own. For 28 years Gore was able to tie Dr. Goldfarb' patent up in proceedings s s before the PTO and the courts arguing that Peter Cooper, not Dr. Goldfarb, was the sole inventor of vascular prostheses made from ePTFE. Throughout that time Gore sold untold billions of dollars of infringing products for which it has not paid a cent to Dr. Goldfarb for the use of his invention. Now Gore continues its practice of throwing up every possible argument, seeking every possible rehearing and asking that every possible decision be reconsidered. The Mars case, like the Agrizap case, is inapposite and does not support Gore' argument. The Mars case was published before the last hearing where Gore s agreed that absent the Court' decisions on inequitable conduct and (possibly) s obviousness, there was nothing more to be done prior to entry of final judgment. After those issues are resolved, the Court should direct entry of final judgment and Gore should

Plaintiffs set out additional reasons why Gore' standing argument is meritless in its s Opposition to Gore' Standing JMOL motion. (Doc. No. 659, at 10-11.) s

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renew its Standing JMOL within ten days, along with any other arguments it properly preserved by a timely Rule 50(a) motion and chooses to renew. WHEREFORE Plaintiffs respectfully request that the Court direct the Clerk to enter final judgment after making its ruling on Gore' inequitable conduct defense and s grant any other relief the Court deems just. June 25, 2008 Bard Peripheral Vascular, Inc., David Goldfarb, M.D. & C. R. Bard, Inc. By their attorneys, By: __/s/ Andrew M. Federhar_________ FENNEMORE CRAIG P.C. ANDREW M. FEDERHAR 3003 North Central Avenue, Suite 2600 Phoenix, Arizona 85012-2913 Phone (602) 916-5000 LATHAM & WATKINS, LLP STEVEN C. CHERNY 885 Third Avenue New York, NY 10022 Phone (212) 906-1200 MAXIMILIAN A. GRANT 555 Eleventh Street, N.W. Washington, DC 20004 Phone (202) 637-2200

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CERTIFICATE OF SERVICE
I hereby certify that on June 25, 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. s/ Andrew Federhar

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