But Medinol, citing a recent U.S. Supreme Court decision, now wants a federal judge to toss her ruling that Medinol waited too long to file the lawsuit, according to court documents and regulatory filings.
Medinol, which won a $750 million decision over erstwhile partner Boston Scientific (NYSE:BSX) in 2005 in another stent war over a related set of patents, accused Cordis in March 2013 of violating 4 of its patents with the Cypher stents, according to the court documents. A year later Judge Shira Scheindlin dismissed the case, ruling on the basis of laches that Medinol’s 8½-year delay in bringing the suit was "unreasonable and inexcusable."
Although Medinol let the deadline for an appeal pass, it asked Scheindlin to reverse, based on the Supreme Court’s May 19 decision in Petrella v. Metro-Goldwyn-Mayer. Medinol argued that the Petrella decision, which followed Scheindlin’s dismissal by a few weeks, "is an intervening change in law that upended the entire laches framework upon which the judgment was based."
"In Petrella, the Supreme Court held that laches is not a defense to an action for copyright infringement brought within the statutory limitation period because laches cannot be used to override a statutory limitation period prescribed by Congress. The holding in Petrella means that laches also cannot be a defense to an action for patent infringement brought within the 6-year limitation period in the patent statute," Medinol claimed last week. "Therefore, Petrella constitutes an ‘extraordinary circumstance’ that justifies the court exercising its equitable discretion to vacate the judgment."
Cordis countered that the Supremes expressly held in Petrella that the decision does not apply to patent law.
"It is perhaps fitting that, having waited 13 years to bring this patent lawsuit and having its lawsuit dismissed on the ground of laches, Medinol now waits 3 months after its time to appeal has expired to raise an issue that it could have raised from the outset," Cordis argued. "Petrella reflects a change in copyright law (at least in the 9th Circuit, whose aberrant rule was reversed by the Supreme Court). The governing law in this case is patent law, not copyright law. Petrella does not change patent law. Indeed … Petrella explicitly states that it is not addressing patent law."
No hearing on the Medinol motion was scheduled as of August 12.