UPDATED Sept. 30, 2011
The latest round in a 14-year-old lawsuit over coronary stents went to Boston Scientific (NYSE:BSX), after a federal appeals court upheld a ruling that its NIR stent doesn’t infringe a patent owned by Cordis Corp.
Johnson & Johnson’s stent-making arm – which plans to be out of the coronary stent business by the end of this year – sued Boston Scientific in 1998, alleging that the NIR device violates some of its patents.
The case bounced around the court system for years, landing at the appeals court several times – and even saw a Delaware judge reverse her original ruling after literally losing the case in the blizzard of paperwork Cordis and Boston Scientific have generated in their bitter feud over stent technology.
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In the latest ruling, the U.S. Court of Appeals for the Federal Circuit upheld Judge Susan Robinson’s decision that Boston Scientific doesn’t literally infringe a claim in one of the disputed patents. The appeals court also affirmed Robinson’s ruling that two of the patents “are not unenforceable due to inequitable conduct.”
“As did the district court, we decline to reach Cordis’s appeal on the issue of reverse doctrine of equivalents because that issue is moot in light of our holding on literal infringement,” according to court documents.
“We are pleased with the decision and will continue to manage our litigation risks as part of our continuing effort to reduce our exposure,” Boston Scientific’s general counsel Tim Pratt said in prepared remarks.
“We’re reviewing the ruling and evaluating our options,” Cordis spokeswoman Sandy Pound told MassDevice.
The case took an interesting turn in August 2009, when Robinson apologized to both parties and the federal bench in overturning her prior ruling that the Cords patents were unenforceable. She’d decided that inventor Robert Fischell’s patent for a “Stent Having a Multiplicity of Closed Circular Structures” was unenforceable on deceptive nondisclosure of prior art grounds when Fischell applied for the patent. That, in turn, nullified a second patent that depended on the validity of the first patent, she wrote.
But the record was far from clear that Fischell and his patent lawyer, Morton Rosenberg, deliberately concealed the prior art, making her initial 2002 ruling mistaken, Robinson wrote in her decision reversing the ruling.
“Therefore, although neither Dr. Fischell nor Mr. Rosenberg prosecuted the [patent] application with the professional care and vigor one might expect from them, I believe it would be clear error for me to imbue their conduct with deceptive intent,” Robinson wrote.
Two years after the appeals court sent the original ruling back to Robinson for clarification, there was no movement in the case. That prompted a lawyer for Cordis to write a letter to Robinson asking if the case had fallen off her radar.
“Counsel are mindful of the fact that the Court has been contending with an increased case load due to the longstanding judicial vacancy, and we therefore have been reluctant to raise the issue, but in light of the amount of time that has passed the possibility occurs to us that this remand inadvertently could have slipped between the cracks,” wrote Steven Balick, a lawyer with Ashby & Geddes, the firm representing Cordis in the case.
Boston Scientific has looked to put other stent battles behind it, agreeing to pay Cordis $716 million in September 2009 to settle 14 stent patent infringement suits and in February inking another, $1.73 billion settlement involving a quartet of other cases dating back to 2003.
