In the News Law360

Boston Scientific Wins $19.5M In Stent Patent Case

A federal jury in Delaware on Wednesday awarded $19.5 million to Boston Scientific Corp. in a patent infringement suit against Johnson & Johnson unit Cordis Corp. over one of Cordis' Cypher heart stents.

"We are pleased to see the jury recognize the value of our intellectual property," Boston Scientific Executive Vice President Hank Kucheman said in a statement Wednesday. "This is an important outcome in protecting our market position in small-vessel, drug-eluting stents against infringing products."

The verdict marks the tail end of nearly a decade of litigation between the medical device manufacturers over multiple patents. In February 2010, a settlement resolved many of the issues and resulted in a $1.7 billion payment from Boston Scientific to Cordis, according to a statement released by Cordis.

Wednesday's patent-in-suit, U.S. Patent Number 5,922,021, was issued in July 1999 and titled "Intravascular stent." The verdict pegged lost profits for infringement of Boston Scientific's drug-eluting stent patent at $18.5 million and reasonable royalties at $1 million.

A heart stent is a metal mesh tube used to hold an artery open and improve blood flow after it is surgically cleared of blockages. Drug-eluting stents like the one at issue in Wednesday's case release medication to reduce the risk of reblockage, according to a Cordis website.

The trial began May 5 and dealt only with the amount of damages. In April, U.S. District Judge Sue L. Robinson resolved the question of liability when she granted summary judgment to Boston Scientific, finding that the product at issue — Cordis' 2.25-millimeter Cypher stent — infringes a claim of the patent-in-suit as a matter of law, since it has the same architecture as three other sizes of stent that were found to infringe the same claim of the patent in a previous case.

Boston Scientific first sued Cordis over the '021 patent in January 2003, saying that three sizes of the Cypher stent were infringing, and a jury returned a verdict in favor of Boston Scientific in July 2005. Cordis asked for a re-examination of the patent-in-suit in October 2009.

In September, a patent examiner rejected three claims of the patent-in-suit as obvious, but Boston Scientific overcame that challenge in December. Cordis filed a second request for re-examination in January, and in February the U.S. Patent and Trademark Office issued a nonfinal office action rejecting one claim of the '021 patent as anticipated and obvious.

Cordis moved the court to delay the current trial until the PTO finished its re-examination, but Judge Robinson, noting that "a final determination by the PTO could take years," denied the motion and sent the case to a jury.

Cordis is considering what, if any, legal steps to take next, a spokeswoman said Wednesday.

The patent-in-suit is U.S. Patent Number 5,922,021.

Boston Scientific is represented by Karen Pascale, John Shaw and Karen Keller of Young Conaway Stargatt & Taylor LLP, Paul Bondor of Desmarais LLP and Jeanne Heffernan and Young Park of Kirkland & Ellis LLP.

Cordis is represented by Steven Balick, Tiffany Geyer Lydon and Andrew Mayo of Ashby & Geddes PA and Gregory Diskant, Eugene Gelernter, Kathleen Crotty and Christopher Jackson of Patterson Belknap Webb & Tyler LLP.

The case is Boston Scientific Corp. et al. v. Cordis Corp., case number 1:10-cv-00315, in the U.S. District Court for the District of Delaware.