Wyeth, now part of Pfizer (NYSE:PFE), and onetime J&J subsidiary Cordis (which became a part of Cardinal Health in October 2015), sued Abbott (NYSE:ABT) and Boston Scientific (NYSE:BSX), alleging that Abbott’s Xience V and Boston’s Promus drug-eluting stents infringed patents covering the Cypher stent made by Cordis using a Wyeth coating.
The suit was triggered when the U.S. Patent & Trademark Office issued Patent No. 7,591,844 — “Medical devices, drug coatings and methods for maintaining the drug coating thereon” — to Wyeth and Cordis back on Sept. 22, 2009. The companies filed suit the next day. Although the quartet agreed to bury the hatchet in a related patent infringement lawsuit in October 2015, Boston Scientific and Abbott asked the Patent Trial & Appeals Board for an inter partes review, arguing that the patent is too obvious to be valid. The PTAB agreed, prompting J&J’s Ethicon subsidiary (which inherited the patent from Cordis) to appeal to the U.S. Court of Appeals for the Federal Circuit.
That court affirmed the PTAB ruling 2-1, with Judge Pauline Newman dissenting.
“Here, the Board made sufficient factual findings under the circumstances to support its obviousness conclusion and those findings are supported by substantial evidence,” Judge Alan Lourie wrote for the majority.
In her dissent, Newman argued that the patent appeals board ignored the polymer coating described in the patent.
“On this inter partes reexamination requested by Boston Scientific Scimed and Abbott Laboratories, the PTAB held that the prior art rendered obvious the claimed vascular stent. I cannot agree, for no reference or combination of references, or common knowledge or common sense, teaches or suggests or motivates the claimed stent,” she wrote. “The references cited by the PTO Board recite thousands of polymer and copolymer components for stent coating materials, but not the copolymer of the ‘844 patent, although this copolymer was known for other uses. There is no hint, no suggestion, of its use as a drug-eluting coating in a vascular stent, nor were its advantages foreseen. Nonetheless the Board deemed it obvious, and this court agrees. I respectfully dissent.”