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Boston Scientific loses big at CAFC

By Lawrence B. Ebert, Esq.

Boston Scientific, represented by Kenyon & Kenyon, was smoked at the CAFC on January 15: Because the court
erred as a matter of law in failing to hold the ?536 patent to have been obvious, we reverse the judgment.

Of the Boston Scientific arguments:

Boston Scientific argues that KSR is irrelevant to this obviousness inquiry
because Cordis urged no particular combination of references. As a secondary
consideration of nonobviousness, Boston Scientific argues that Wolff and two of the
other references asserted by Cordis were assigned to Medtronic, who failed to develop
a drug-eluting stent before the priority date of the ?536 patent. Had it been so obvious,
Boston Scientific argues, Medtronic would have made the claimed invention. Also,
according to Boston Scientific, Cordis?s expert admitted to the long-felt need to deliver
drugs from stents. Finally, Boston Scientific argues that Cordis?s witness stated that the
success of the Cypher stent was due to the claimed polymer coating system.

The punchline:

We agree with Cordis that Wolff alone renders claim 8 of the ?536 patent obvious
and therefore invalid. Because we hold the claim obvious based on Wolff alone, we do
not address Cordis?s arguments for obviousness based on Domb or any other
reference.

One point:

Boston Scientific argues that Wolff fails to recognize the additional non-
thrombogenic benefits of a topcoat that is substantially drug-free over a topcoat that
contains drug, but Wolff need not have recognized the additional benefit of one
embodiment to have rendered the claim obvious. See, e.g., Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (?That the [prior art] patent discloses a
multitude of effective combinations does not render any particular formulation less
obvious. This is especially true because the claimed composition is used for the
identical purpose taught by the prior art.?); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir.
1985) (affirming obviousness rejection of claims in light of prior art teaching that
?hydrated zeolites will work? in detergent formulations, even though ?the inventors
selected the zeolites of the claims from among ?thousands? of compounds?).

The CAFC cited KSR: However, ?[i]f a person of ordinary skill can implement
a predictable variation, § 103 likely bars its patentability.? KSR, 127 S. Ct. at 1740.

Familiar text: We also agree with Cordis that the weak secondary considerations of
nonobviousness do not overcome the strong prima facie showing that Wolff renders
claim 8 of the ?536 patent obvious. Here Leapfrog was cited: ?given the strength of the prima facie
obviousness showing, the evidence on secondary considerations was inadequate to
overcome a final conclusion that [the claim] would have been obvious.?

A word to the wise: We are free to override the jury?s legal conclusion on the
ultimate question of obviousness without deference. See Muniauction, Inc. v. Thomson
Corp., 532 F.3d 1318, 1324?28 (Fed. Cir. 2008). We therefore hold as a matter of law
that claim 8 would have been obvious in view of Wolff.

***WSJ online noted:

Johnson & Johnson won another round against Boston Scientific Corp. in a long-running patent litigation over heart stents. The decision makes it more likely that Boston Scientific will have to make a $700 million payment to J&J.

Since 1997, the two companies have been locked in litigation over the popular medical devices, which are tiny scaffolds that prop open clogged arteries. J&J, which sold the first heart stents in the U.S., has patents on the basic devices and has won infringement suits against Boston Scientific.

But Boston Scientific had also won its own victories against J&J, concerning patents it holds on adding medicine to the outside of a stent to keep arteries from reclogging after a stent is implanted. Such coated stents have edged out older, bare stents.

Full post as published by IPBiz on January 15, 2009 (boomark / email).