PATENTS |
Goldfarb v. W.L. Gore & Associates, Inc.
T-2567-87
2001 FCT 45, Lemieux J.
9/2/01
48 pp.
Conflicting claims--Sole question in Patent Act, s. 45(8) proceeding: who, as between Goldfarb and Cooper, who assigned invention rights to defendant employer W.L. Gore & Associates, first inventor of appropriate internal structure for artificial vascular prosthesis for implantation in human body to replace natural veins and arteries using expanded porous polytetrafluoroethylene (ePTFE) with internal microstructure consisting of nodes interconnected by fibrils--Microstructure, in particular distance between nodes (fibril length) said to be invention as permits and controls tissue cellular growth and assures establishment and health of thin viable neointima, consisting of endothelial cell, necessary for smooth blood flow--Registrar of Patents awarded four conflict claims (C-1 to C-4) to Gore and four (C-5 to C-8) to Goldfarb--Plaintiff Goldfarb successful in proceedings, Registrar directed to award conflict claims C-1 to C-8 to Goldfarb--Critical issue herein to determine date of invention, i.e. discovery of range of appropriate internodal distances or fibril lengths between nodes in internal structure of ePTFE tubing for use as artificial vein or arterial replacement graft in humans--Date of invention--To establish date of invention prior to filing date of application, necessary to be able to show invention reduced to practical and definite shape either by written or oral description of it that would enable person skilled in art to make it or, for apparatus, by apparatus having been actually made; not necessary to have made embodiment of it: Koehring Canada Ltd. v. Owens-Illinois Inc. (1980), 52 C.P.R. (2d) 1 (F.C.A.)--No necessity of disclosure to public: Christiani v. Rice, [1930] S.C.R. 443--Invention complete if disclosure would enable person skilled in art to make invention defined by conflict claims without exercise of inventive ingenuity: Koerhing Canada--For apparatus, essential fact to be proven: at asserted date, invention no longer mere idea floating through inventor's brain but had been reduced to definite and practical shape--Utility--Test of utility or usefulness reflecting notion that patent will work--Proving actual utility at claimed date of invention not only way of establishing it--According to Canadian patent law, sufficient, in certain circumstances, if inventor had soundly predicted utility of invention at that date--True inventor--True inventor person having demonstrated inventive ingenuity--Evidentiary matters--In patent conflict cases, onus on appellant to establish authorship and date of invention; desirability of supporting evidence in terms of diary sketches, experimental records and by disclosure--Considering evidence as whole, Goldfarb has established date of invention, at latest, of August 7, 1973--Evidence suggesting Cooper only realized key to successful ePTFE graft (appropriate internodal distance) only came to him after receiving Detton's report in 1974, as Registrar found--Patent Act, R.S.C. 1970, s. 45(8).