IP Watch: Mixed Patent Rulings for Boston Scientific

Early this month, Boston Scientific Corp. (Natick, MA) announced favorable rulings in two separate patent disputes. However, several weeks later, these victories were overshadowed by a ruling in a separate patent dispute, in which a U.S. District Court jury in Marshall, TX, found that Boston Scientific had infringed three patents owned by Medtronic Inc. (Minneapolis). The jury awarded Medtronic $250 million in damages.

In its lawsuit, Medtronic alleged that certain Boston Scientific balloon catheters and stent delivery systems infringed four U.S. patents held by Medtronic. Boston Scientific claimed noninfringement, invalidity, unenforceability, and other equitable relief. Prior to the jury's finding of infringement, the court had granted Boston Scientific's summary judgment motion on one of the patents and dismissed Medtronic's claim of willful infringement, Boston Scientific reported.

Following the verdict, Boston Scientific reported that it has raised a number of defenses that were not considered by the jury but will be heard by the district court on July 31. If those defenses are successful, the jury's verdict will be set aside, the company stated.

If its defenses are not successful, Boston Scientific plans to seek to overturn the verdict in posttrial motions before the district court and, if necessary, to appeal to the U.S. Court of Appeals for the Federal Circuit, in Washington, DC. The company further stated that it is “confident it will prevail on appeal because it believes the jury verdict is unsupported by both the evidence and the law.”

Earlier this month, two separate court rulings looked much more favorably on Boston Scientific's intellectual property. On May 8, the company announced that the Canadian Federal Court had dismissed a lawsuit in which Johnson & Johnson Inc. (J&J; New Brunswick, NJ) accused Boston Scientific's Nir stent of infringing two of its patents. In dismissing the suit, the court found that the Nir stent did not infringe one of the J&J patents in question. It found that the second patent was invalid.

Despite the dismissal, patent disputes between the two companies continue. Boston Scientific reports that J&J recently filed a second lawsuit in Canada in which it accuses Boston Scientific's Express and Taxus Express stents of infringing the same two patents that were at issue in the dismissed case.

“We are very pleased with the decision by the Canadian Federal Court dismissing this case,” said Paul LaViolette, Boston Scientific's chief operating officer. “The ruling affirms our position that our products do not infringe these patents. We also believe our Express and Taxus Express coronary stents do not infringe—as alleged by Johnson & Johnson—and are hopeful the court will reach the same conclusion.”

In addition to the J&J lawsuit dismissal, earlier this month Boston Scientific reported that an arbitration panel of the World Intellectual Property Organization (WIPO; Geneva) had ruled that its Libert é and Taxus Libert é stents do not infringe patents held by Medinol Ltd. (Tel Aviv, Israel). Medinol—which requested the WIPO arbitration following a 2005 settlement agreement between the companies—alleged that the stents infringed several of its U.S. and European patents.

Under the terms of the settlement agreement, Medinol has a right to appeal to another WIPO panel, Boston Scientific reports.

The ruling is yet another chapter in a long history of legal disputes between the two companies. In 2005, Boston Scientific agreed to pay $750 million to Medinol to resolve a long-standing dispute over the manufacture and sale of coronary stents. Additionally, Boston Scientific agreed to return its 22% stake in the Israeli medtech manufacturer. For its part, Medinol stipulated that any future dispute involving alleged patent infringement by Boston Scientific would be settled through an established arbitration process and that any relief would be limited to reasonable royalties. Medinol also agreed not to seek an injunction against the sale of Express or Taxus stents.

Industry IP in Brief

• A federal judge in Manhattan has throw out nearly all of the claims in a lawsuit brought by Johnson & Johnson Inc. (J&J; New Brunswick, NJ) against the American Red Cross. In the suit, J&J had asserted that it owns the rights to the red cross design trademark on commercial products. The suit claimed the nonprofit relief organization violated the organizations' longstanding trademark-sharing agreement by licensing the cross to sellers of retail products.

• Biophan Technologies Inc. (Pittsford, NY) has acquired the patent portfolio of Nanoset LLC. The acquisition includes more than 15 issued patents and a number of patent applications covering various uses of nanomagnetic materials, including MRI image compatibility and novel materials and methods for targeted drug delivery. Nanoset's technology was previously licensed to Biophan, but was limited to medical fields. The acquisition removes such a limitation, providing additional license opportunities.

• On May 27, SonoSite Inc. (Bothell, WA) reported that General Electric Co. (GE; Fairfield, CT) had filed a lawsuit in the U.S. District Court for the Western District of Wisconsin seeking to invalidate a SonoSite patent focused on handheld ultrasound technology. This is the second lawsuit that GE has filed against SonoSite alleging patent infringement. SonoSite has denied all of GE's claims and alleged that the asserted patents are either invalid, not infringed, or both. SonoSite has filed counterclaims asserting that GE and its affiliated companies infringe four SonoSite patents covering various core ultrasound-related technologies.

© 2008 Canon Communications LLC

Return to MX: Issues Update.