Date: 20021204
Neutral citation: 2002 FCA 486
BETWEEN:
W.L. GORE & ASSOCIATES INC.
Appellant
and
DAVID GOLDFARB
Respondent
Heard at Ottawa, Ontario, on December 3 and 4, 2002.
Judgment delivered from the Bench at Ottawa, Ontario, on December 4, 2002.
REASONS FOR JUDGMENT OF THE COURT BY: NOËL J.A.
Date: 20021204
Neutral citation: 2002 FCA 486
BETWEEN:
W.L. GORE & ASSOCIATES INC.
Appellant
and
DAVID GOLDFARB
Respondent
REASONS FOR JUDGMENT OF THE COURT
(Delivered from the Bench at Ottawa, Ontario,
on December 4, 2002)
[1] This is an appeal from a decision of Lemieux J. of the Trial Division. (The decision is reported at (2001) 11 C.P.R. (4th) 129.) The Trial Judge was called upon to determine who, as between the respondent Dr. David Goldfarb and the appellant's named inventor, Peter Cooper, first invented the subject-matter of the 8 conflict claims in suit.
[2] These conflict claims are directed towards a prosthetic device comprising expanded polytetrafluoroethylene (ePTFE) with fibril lengths ranging from, at the broadest, approximately 6 to 200 microns (µ) thereby permitting tissue ingrowth. The Trial Judge held that Dr. Goldfarb was the first inventor of the subject-matter of all the conflict claims to the exclusion of Mr. Cooper and awarded the claims accordingly.
[3] On appeal, the appellant has essentially taken issue with the Trial Judge's findings and inferences of fact and credibility. The standard of review to be applied is that set out by the Supreme Court in Housen v. Nikolaisen, 2002 SCC 33 where the Court stated (paragraph 23):
... it is not the role of appellate courts to second-guess the weight to be assigned to the various items of evidence. ... The appellate court is not free to interfere with a factual conclusion that it disagrees with where such disagreement stems from a difference of opinion over the weight to be assigned to the underlying facts.
[4] The Court further explained (paragraph 25):
Although the Trial Judge will always be in a distinctly privileged position when it comes to assessing the credibility of witnesses, this is not the only area where the Trial Judge has an advantage over appellate judges. Advantages enjoyed by the Trial Judge with respect to the drawing of factual inferences include the Trial Judge's relative expertise with respect to the weighing and assessing of evidence, and the Trial Judge's inimitable familiarity with the often vast quantities of evidence. This extensive exposure to the entire factual nexus of a case will be of invaluable assistance when it comes to drawing factual conclusions. In addition, concerns with respect to cost, number and length of appeals apply equally to inferences of fact and findings of fact, and support a deferential approach towards both. As such, we respectfully disagree with our colleagues' view that the principal rationale for showing deference to findings of fact is the opportunity to observe witnesses first-hand. It is our view that the Trial Judge enjoys numerous advantages over appellate judges which bear on all conclusions of fact, and, even in the absence of these advantages, there are other compelling policy reasons supporting a deferential approach to inferences of fact. We conclude, therefore, by emphasizing that there is one, and only one, standard of review applicable to all factual conclusions made by the Trial Judge - that of palpable and overriding error.
[5] Applying this standard to the appellant's arguments, we have no difficulty in concluding that the Trial Judge made no palpable and overriding error in awarding the conflict claims to Dr. Goldfarb.
[6] Specifically, the evidence allowed the Trial Judge to conclude that Mr. Cooper did not invent anything on May 1, 1973, and that the entry which he made in his lab book on that date did not establish that he had made the contested invention.
[7] Contrary to the appellant's assertion (Memorandum of Fact and Law, paragraph 31), the lab book does not indicate that a fibril length in the range of 50 to 100 microns is key to the invention which Mr. Cooper purports to have recorded; only two features are identified as necessary: (1) a poker chip structure; and (2) a minimum skin. In our view, it was open to the Trial Judge to infer from this that Mr. Cooper did not understand the significance of the internodal spacing which he had observed. This is particularly so when regard is had to Mr. Cooper's subsequent behaviour.
[8] In this respect, the Trial Judge noted in the course of his Reasons that Mr. Cooper failed to (1) draw any conclusion from his fibril length observation; (2) disclose the fibril lengths to others; (3) effect a change in manufacturing GORE-TEX grafts to include the observed fibril lengths; (4) alter shipping logs to reflect the fibril lengths of the grafts being shipped; (5) provide his lab book to Gore's patent attorney or provide him with any indication as to why fibril length was important (Reasons, paragraphs 151 to 159).
[9] Taken together, we are of the view that these considerations allowed the Trial Judge to conclude that Mr. Cooper did not understand the significance of the fibril length which he observed on May 1, 1973 and that accordingly he could not appreciate that this was the essence of the invention which he later claimed as his own.
[10] The appellant also made argument with respect to the Trial Judge's findings that the 64-Graft Experiment and the 1984 and 1988 fibril length measurements, which all came within the range claimed by the invention, were corroborative of an invention by Dr. Goldfarb. According to the appellant, the fibril length can just as well be explained by the fact that Mr. Cooper provided only tubes with the qualifying fibril length either by choice or by coincidence. The appellant submits that evidence that is neutral at best cannot possibly be corroborative.
[11] That may well be so but the Trial Judge, whose task it was to appreciate the evidence, did not view the evidence in question as neutral. He accepted the testimony of Dr. Goldfarb to the effect that he observed the tubing provided to him, selected the desired fibril length and preserved the implanted tubing in paraffin blocks. The fact that selections were made by Dr. Goldfarb is consistent with the evidence which shows that Mr. Cooper provided Dr. Goldfarb with a "variety" of tubing (Reasons, paragraph 39) and that Dr. Goldfarb did not implant all the tubing sent to him (Appeal Book, volume 3, tabs 51, 53 and 54 and volume 5, tab 92). It is uncontested that the implanted tubing from which the measurements were taken had been preserved from the time of the experiment in paraffin blocks.
[12] Furthermore, since Mr. Cooper conceded during his cross-examination that he did not focus on fibril length prior to May 1, 1973 (Appeal Book, volume 21, page 1887), coincidence is the only explanation capable of supporting the appellant's argument. The proposition that all the tubing provided to Dr. Goldfarb fell within the desired length by coincidence is extremely unlikely given the rudimentary manufacturing techniques used at the time which consisted in the manual stretching of the material to create variations in fibril length.
[13] In our view, it was open to the Trial Judge to hold that the fibril length recorded by Dr. Goldfarb from his 1973 experiments provided 'some corroboration" (Reasons, paragraph 141) that by August of that year at the latest, Dr. Goldfarb understood the significance of the requisite fibril length.
[14] The appeal will be dismissed with costs.
"Marc Noël"
J.A.
FEDERAL COURT OF APPEAL
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: A-163-01
STYLE OF CAUSE:W.L. Gore & Associates Inc.
and
David Goldfarb
PLACE OF HEARING: Ottawa, Ontario
DATE OF HEARING: December 3 and 4, 2002
REASONS FOR JUDGMENT OF THE COURT: STRAYER J.A.
LINDEN J.A.
NOËL J.A.
RENDERED FROM THE BENCH BY: NOËL J.A.
APPEARANCES:
George E. Fisk FOR THE APPELLANT
Joan Clark, Q.C. FOR THE RESPONDENT
Joanne Chriqui
Frédérique Amrouni
SOLICITORS OF RECORD:
Blake Cassels & Graydon LLP FOR THE APPELLANT
Ottawa, Ontario
Ogilvy Renault S.E.N.C. FOR THE RESPONDENT
Montréal, Québec