Federal Judiciary

Medtronic Verdict Against Boston Scientific Cut Again - this time to $19 million

By Michael Smith

Medtronic v. Boston Scientific Corp., 2:06cv078-TJW (E.D. Tex. August 29, 2008)
Judge: T. John Ward
Holding: (Another) Damages Award Reduction
About six weeks ago Judge Ward has granted part of Boston Scientific's motion for JMOL on the damages in this patent case.  As readers may recall, Medtronic obtained a damages  verdict of $250 million this spring against BSC, but with respect to the $83 million attributable to what was referred to as the Anderson patent, there was a problem, which as I reported three weeks ago resulted in a damages reduction by $63.91 million, meaning that "damages in the case currently sit at $186 million, and the remainder of BSC's JMOL remains pending."  (I like to quote myself when it makes me look prescient).
Last Friday Judge Ward addressed one of those issues remaining pending, holding that two of Medtronic's asserted patents were unenforceable due to inequitable conduct - specifically Judge Ward found that a Medtronic patent agent withheld from the examiner  information on Medtronic's own prior inventions.  That dropped the recoverable damages remaining by almost 90% to $19 million.  Judge Ward declined to find inequitable conduct with respect to the Anderson patent (that's the one that had its damages dropped from $83 million to $19 million in the prior order) and likewise declined to find for BSC on its claims of indefiniteness and laches.
Here's a interesting tidbit.  What does the patent agent say about all this?  In footnote 2 of his opinion, Judge Ward notes that "[a]ccording to Crittenden [the patent agent], this seizure has affected his memory of the events during the prosecution of these patents. This condition was not revealed by the plaintiffs to the defendant or this court until the day of the bench trial. Crittenden Tr. 59:21-60:18. In the course of four depositions involving the Fitzmaurice patents, Crittenden never mentioned any memory issues. Crittenden Tr. at 59:25-60:23."  (Emphasis mine).  Ouch, ouch, ouch!  That hurts even to read. 

Full post as published by Eastern District of Texas Federal Court Practice on September 03, 2008 (boomark / email).