Patent Law

Stented

By Gary Odom and Jordan Kuhn

Boston Scientific and Johnson & Johnson have a long-running battle of heart stent patents. Both have had victories in their war, which started in 1997. Today the victory was J&J's, overturning a unfavorable jury verdict, as Obzilla, the patent grim reaper, takes another victim on appeal.

Boston Scientific v. Cordis and Johnson & Johnson (CAFC 2008-1073)

Claim 8 of 6,120,536 was asserted.

The CAFC affirmed the trial court's claim construction.

Obzilla the magician turns facts into law, emboldening the CAFC to de novo wave its wand, without deference.

"We review the jury's conclusions on obviousness, a question of law, without deference, and the underlying findings of fact, whether explicit or implicit within the verdict, for substantial evidence." Johns Hopkins Univ. v. Datascope Corp., 543 F.3d 1342, 1345 (Fed. Cir. 2008) (quotation marks omitted). While a jury may render a decision on a question of obviousness when it is considering any underlying fact questions, see id., obviousness is ultimately a question of law that this court reviews de novo. When we consider that, even in light of a jury's findings of fact, the references demonstrate an invention to have been obvious, we may reverse its obviousness determination. See Richardson-Vicks, Inc. v. Upjohn Co., 122 F.3d 1476, 1479 (Fed. Cir. 1997) ("[I]n re-creating the facts as they may have been found by the jury, and in applying the Graham factors to the case, we assess the record evidence in the light most favorable to the verdict winner . . . , though this does not mean that we are free to abdicate our role as the ultimate decision maker on the question of obviousness. That decision remains within our province." (citation omitted)). That is the case here.

Obzilla plays invalidation as a game of hand grenades: close is close enough to kill. The single prior art reference, Wolff, had the claimed features if two embodiments were put together.

("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)

As we have explained, Wolff teaches all of the limitations of claim 8, and the record did not contain substantial evidence for the jury to conclude otherwise. The only qualification to this statement of fact is that all of the limitations are found in two separate embodiments pictured side by side in the patent, not in one embodiment. However, "[i]f a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability." KSR, 127 S. Ct. at 1740... Combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.

"Where . . . the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment [or JMOL] is appropriate." KSR, 127 S. Ct. at 1745-46; see Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000) ("[T]he standard for granting summary judgment mirrors the standard for judgment as a matter of law, such that the inquiry under each is the same." (quotations omitted)).

Reversed.

Losing at trial always means another bite at the apple on appeal.

Boston Scientific, on hook for a previous $700 million royalty payment, ordered last September, has pledged part of a $2 billion credit line to cover its bets until its appeal comes a cropper.

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