Federal judge: Four J&J patents invalid in infringement dispute with Boston Scientific

January 21, 2010 by MassDevice staff

Boston Scientific Corp. (NYSE:BSX) won the latest round in its long-running patent war with Johnson & Johnson (NYSE:JNJ) when a federal judge declared invalid a quartet of J&J subsidiary Cordis Corp's. patents for drug-eluting stents.

The patents in question are at the heart of complicated legal wrangling involving the Natick, Mass.-based medical device giant, its new Brunswick, N.J.-based rival, Abbott (NYSE:ABT) and Wyeth. The dispute centers around Boston Scientific's Promus stent, a private-label version of Abbott's Xience V stent, and the Cordis Cypher.

BSX asked Judge Susan Robinson of the U.S. District Court for Delaware to rule the four patents invalid on various grounds; JNJ wanted Robinson to declare infringement of a single claim contained in one of the patents, according to court documents. Robinson ruled in favor of Boston Scientific's claim that J&J's patent covering the sirolimus (also called rapamycin) used in Cordis's Cypher stent doesn't cover the everolimus drug BSX uses in the Promus device. Everolimus is made by modifying the sirolimus molecule at a single location.

Robinson also found that the fourth patent wasn't specific enough in describing exactly which drug formulations it covered to be valid, because the patent didn't include a written description of at least one example of such a formulation.

Her decision, which means a jury trial scheduled for Feb. 9 will not happen, is not the last word in the stents war between Boston Scientific and Johnson & Johnson.

"Boston Scientific will continue to vigorously defend against any charges of infringement. We continue to attempt to resolve remaining outstanding matters with Johnson & Johnson," BSX CEO Ray Elliott said in a prepared statement.

Boston Scientific agreed to pay Cordis $716 million in September 2009 to settle 14 stent patent infringement suits. The settled cases, involving lawsuits in U.S., Canadian, Belgian, German, French and Italian courts, include the so-called Palmaz-NIR suit, involving a patent by the radiologist who invented stents, Julio Palmaz.

The estimated settlement cost in that case would make up most of the $716 million nut to settle it and the other 13 suits.

Johnson & Johnson owns that patent and in 2000 won a lawsuit alleging that an early BoSci stent, the NIR, infringed the technology, according to the Wall Street Journal (paid). Boston Scientific appealed, but told investors in 2008 that it expected that case to cost at least $703 million.

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