Boston Scientific Corp. (NYSE:BSX) is looking to run a double-reverse with its appeal of a judge’s decision in its long-running war with Johnson & Johnson’s (NYSE:JNJ) Cordis Corp. over stent patents.
The Natick, Mass.-based medical device maker filed an appeal with the U.S. Court of Appeals for the Federal Circuit seeking to reverse an August 2009 ruling, which itself reversed a prior decision, regarding the enforceability of a pair of Cordis Corp. patents.
Last summer, Judge Susan Robinson of the U.S. District Court for the District of Delaware said her 2006 decision in Cordis Corp. v. Boston Scientific Corp. et al. was wrong and reversed the opinion, setting the stage for still more rounds in the more than 10-year-old case. 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, Robinson ruled.
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.
Now Boston Scientific wants the federal appeals court to over-rule Robinson’s over-ruling of herself. It’s just the latest episode in the stent wars between the companies over the lucrative stent market. In January, Robinson handed a round to Boston Scientific, ruling invalid a quartet of Cordis patents covering drug-eluting stents. Cordis appealed that ruling in February and BSX cross-appealed the next month.
Boston Scientific and new CEO Ray Elliott have looked to put other stent battles behind them, agreeing to pay Cordis $716 million in September 2009 to settle 14 stent patent infringement suits and in February inking another, $1.725 billion settlement involving a quartet of other cases dating back to 2003.