Boston Scientific Wins Summary Judgment of Willfulness despite Rejection of Patent Claim in Reexamination

Scott Daniels | May 3, 2011

The trial in cardiovascular stent case, Boston Scientific v. Cordis, is scheduled to start this Thursday.   Last Thursday Judge Sue Robinson granted summary judgment that Cordis’ 2.25 mm Cypher stent infringes Boston’s U.S. Patent No. 5,922,021 and that Cordis’ infringement was willful. 

Cordis had argued that if there were infringement of the ‘021 patent, that infringement was not willful because the ‘021 claims-in-suit have been rejected by examiner in the reexamination proceeding currently pending before the PTO.  Cordis pointed specifically to a non-final rejection of the claims, dated February 18th, in which the examiner found Boston’s main claim to be anticipated by the newly considered Richter patent.  According to Cordis, the examiner “found that Richter ‘404 discloses the exact feature that [Boston] has touted as the novel aspect of claim 36.”  Cordis also asserted that the examiner was applying the broad claim construction asserted by Boston in an earlier infringement case between the two parties, in fact a construction broader than in the original ‘021 patent prosecution – “[t]he pending reexamination is the first time that the PTO has considered the patentability of claim 36 under the broader construction that was adopted in” the earlier litigation. 

Judge Robinson was not buying.  She began her analysis by ruling that evidence of the reexamination was inadmissible at trial.  “Rejections on reexamination are not binding, and such evidence is almost always more prejudicial than probative.”

On the specific question of willfulness, Judge Robinson pointed out that Cordis had been aware of the ‘021 patent since the earlier litigation between the parties, where the jury had found that the patent was valid and infringed, a verdict affirmed by the CAFC in March 2009, yet “did not launch the 2.25 mm Cypher stent until September 2009 and did not initiate the reexamination proceeding until October 19, 2009.”  She added that “the grant of a request for reexamination does not necessarily establish a likelihood of patent invalidity,” and in this case, that the “evidence of the reexamination proceeding alone does not provide Cordis with evidence of invalidity sufficient to raise a close question regarding willfulness….”  Finally, since the pending reexamination was the only evidence proffered by Cordis in its defense to the allegation of willfulness, Judge Robinson granted summary judgment of willful infringement to the patentee Boston.

Although Judge Robinson speaks very categorically in concluding that the reexamination plays no part in the resolution of the willfulness issue, we suspect the immediacy of the trial – the day after tomorrow – and Cordis’ late filing of its reexamination request were major factors in her conclusion.

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