Appeals court backs BSX over Cordis

A federal appeals court ruled that a quartet of patents owned by Johnson & Johnson (NYSE:JNJ) stent maker Cordis Corp. are invalid in a lawsuit between the healthcare giant and Boston Scientific Corp. (NYSE:BSX).

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.

In January, Judge Susan Robinson of the U.S. District Court for Delaware ruled in favor of Boston Scientific‘s claim that J&J’s patent covering the sirolimus (also called rapamycin) used in the Cordis 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.

The U.S. Court of Appeals for the Federal Circuit upheld Robinson’s decision yesterday.

"Because no finder of fact could reasonably determine that the asserted claims of the patents-in-suit contained an adequate written description, we affirm," wrote Judge Kimberley Moore, according to court documents. "We agree with BSC that no reasonable jury could conclude that there is sufficient written description support for the asserted claims of the 1997 patents."

Boston Scientific was quick to tout the win in a press release yesterday.

"We are pleased with the Court’s confirmation that all four Johnson & Johnson patents are invalid," Hank Kucheman, president of BSX’s cardiology, rhythm and vascular division, said in prepared remarks. "Boston Scientific will continue to vigorously defend against charges of infringement so that we can continue to provide our Promus products to patients in the U.S."

Cordis was more circumspect in a email to MassDevice.com.

"We are studying the ruling by the U.S. Court of Appeals for the Federal Circuit and have no comment at this time," wrote spokeswoman Sandy Pound.

The appeals court’s ruling is not the last word in the long-running stents war between Johnson & Johnson and Boston Scientific, which 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. Boston Scientific appealed, but told investors in 2008 that it expected that case to cost at least $703 million.

And the company took a time-out from the tsuris over CEO Ray Elliott’s retirement to crow over a $19.5 million jury award in another case before Delaware’s Robinson (who ruled that separate juries would consider the penalty phases back in 2009).

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