A trio of med-tech titans logged a win against Johnson & Johnson (NYSE:JNJ) in a long-running battle over drug-eluting coronary stent patents.
Judge Joel Pisano of the U.S. District Court for New Jersey last week dismissed J&J’s claims against Boston Scientific (NYSE:BSX), Abbott Laboratories (NYSE:ABT) and Medtronic (NYSE:MDT), finding that the patents in question hadn’t been adequately described and were thus invalid.
J&J’s Cypher stent, the first drug-eluting stent to hit the U.S. market, is coated in sirolimus (also called rapamycin and rapamune), the patents for which are held by Pfizer Inc.’s (NYSE:PFE) Wyeth subsidiary.
J&J and Wyeth claimed that Abbott’s Xience V DES and Medtronic’s Endeavor stent were using related drugs without permission. The drug coatings help prevent scarring in the blood vessels that can occur after angioplasty procedures, keeping the vessels from re-narrowing.
Boston Scientific got pulled into the lawsuit because its Promus stent is a private-label version of the Xience V, licensed from Abbott. The Xience V and Promus stents are coated in everolimus.
Medtronic’s Endeavor is coated in zotarolimus. Both everolimus and zotarolimus are made by modifying the sirolimus molecule at a single location.
J&J and Wyeth argued that the drug patent covers a family of analogs to sirolimus, while the trio of defendants argued that the patent only applied to the original configuration of the drug and not its variations.
Pisano ultimately invalidated Wyeth’s patents on the grounds that they didn’t meet description requirements, court documents show, closing another chapter in the ongoing battle between the stent warriors.
In January of last year, Judge Susan Robinson of the U.S. District Court for Delaware ruled in favor of Boston Scientific’s claim that J&J’s sirolimus patent doesn’t apply to everolimus.
Robinson also found that one of the patents 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 1 example of such a formulation, according to court documents.
Boston Scientific logged another win against J&J later that year, when a federal appeals court upheld Robinson’s ruling in June.
Cordis first joined forces with Wyeth in Sept. 2009, filing a lawsuit against Abbott and Boston Scientific the day after the pharma giant won its sirolimus patent.
Boston Scientific was quick to tout its win with a press release issued today.
"We are pleased with the Court’s finding that both of these Johnson & Johnson patents are invalid," Tim Pratt, executive VP, chief administrative officer and general counsel for Boston Scientific, said in a press release. "Boston Scientific will continue to vigorously defend against any claims of infringement."
Johnson & Johnson, Medtronic and Abbott did not immediately reply to requests for comment.
German dental products maker challenges Align’s European patents
German dental products maker Ortho Caps GmbH is challenging Align Technology’s European patents in response to Align’s patent infringement lawsuit.
Ortho sent a personal letter to Align CEO Thomas Prescott to inform him of its intent to challenge the patents, which are still in a period allocated for filing oppositions with the European Patent Office, according to Ortho’s press release.
Not to be ruffled, Align issued its own press release later the same day, expressing its intent to move forward with the lawsuit, which alleges that Ortho infringes on 5 patents pertaining to orthodontic aligners.
"We are not surprised by the allegations in the Ortho Caps’ press release," Align VP of legal affairs and general counsel Roger George said in prepared remarks. "When parties cannot defend against claims of patent infringement, they often resort to challenging the validity of the patents at issue. To date, Ortho Caps has not denied infringement of Align’s patents." Read more
Marine Polymer asks for en banc hearing in HemCon trial
Marine Polymer Technologies won a motion for an en banc hearing of its case against HemCon Medical Technologies for alleged infringement of silver-coated wound dressing patents.
The en banc hearing entails a full panel of 11 active Federal Circuit Judges as well as Senior Judge Gajarsa rehearing the case, according to a press release. The panel of judges decided not to request additional briefing or oral arguments, and will proceed based on briefs and arguments already submitted to the court.
In Sept. 2011 HemCon Inc. won its appeal of a U.S. District Court for New Hampshire decision that it infringed a Marine Polymer Technologies Inc. patent for silver-coated wound dressings.
The decision vacated a $29.4 million judgment against HemCon and a ruling that barred it from making the allegedly infringing products (the appeals court later stayed the verdict pending the outcome of HemCon’s appeal).