Federal Circuit Invalidates Boston Scientific’s Stent Patent for Being Obvious

Holding:

The U.S. Court of Appeals for the Federal Circuit has reversed a decision against Johnson & Johnson Inc. and its subsidiary Cordis Corp. who were accused of infringing a Boston Scientific Corp. patent. The U.S. District Court for the District of Delaware had earlier sustained a jury finding that Boston Scientific’s patent relating to drug-eluting stent was infringed and not obvious. On appeal, the Federal Circuit disagreed, stating that the patent-at-issue was obvious as a matter of law in view of a prior art reference known as Wolff. The Federal Circuit explained that 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 was that all of the limitations are found in two separate embodiments pictured side by side in the patent, not in one embodiment. Combining two embodiments in a single prior art reference “does not require a leap of inventiveness,” the Federal Circuit held. Accordingly, the Federal Circuit reversed the district court’s judgment of infringement and non-obviousness.

Detailed Summary:

Defendants-appellants Cordis Corp. and Johnson & Johnson, Inc. (collectively “Cordis”) appealed from the judgment of the district court denying a motion for a new trial and judgment as a matter of law (“JMOL”) following a jury verdict of infringement of claim 8 of the ’536 patent owned by plaintiffs-appellees Boston Scientific Scimed, Inc. and Boston Scientific Corporation (collectively “Boston Scientific”).  This patent relates to a drug-eluting expandable stent with a coating that has a non-thrombogenic surface.

By way of background, in March 2003, Boston Scientific sued Cordis for infringement of the patent-at-issue. The stent has a metal core surrounded by a…

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