Boston Scientific Corp. v. Cordis Corp.
2011 U.S. Dist. LEXIS 40022
| D. Del. | 2011Background
- BSC alleges Cordis willfully infringed claim 36 of the '021 patent by manufacturing the 2.25 mm Cypher stent.
- The '021 patent issued July 13, 1999; claim 36 covers specific stent strut geometry that supports flexibility and scaffolding.
- The 03-027 case established liability for similar stent designs; a license ultimately covered BX Velocity and Cypher products.
- Cordis sought ex parte reexamination of the '021 patent; reexamination was granted and has produced non-final rejections thus far.
- The 2.25 mm Cypher stent, first marketed in September 2009, is identical in architecture to other Cypher stents but uses a 2.25 mm nominal balloon.
- Discovery in this case is complete; trial was scheduled for May 2011.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether to stay damages/willfulness pending reexamination | Cordis seeks stay for efficiency; BSC argues against delay. | Stays conserve resources during reexamination and may resolve validity issues. | Stay denied |
| Whether the 2.25 mm Cypher stent infringes claim 36 of the '021 patent | Infringement shown by identical architecture to previously adjudicated infringing stents. | No dispute about infringement; valid defenses framed elsewhere. | Infringement established as a matter of law |
| Date of hypothetical negotiation for damages | Hypothetical negotiation date aligns with first infringement (Sept. 2009). | Earlier dates (1999 or 2002) should control due to continuous infringement theories. | September 2009 chosen; other dates rejected |
| Daubert motions regarding expert testimony on royalty and dates | Woodford's methodology valid; Thomas's earlier-date opinions should be excluded. | Woodford's method questionable; Thomas's dates should be admitted. | Woodford admitted; Thomas's earlier dates excluded |
Key Cases Cited
- Applied Med. Res. Corp. v. U.S. Surgical Corp., 435 F.3d 1356 (Fed. Cir. 2006) (reasonableness of royalty in hypothetical negotiations)
- Applied II, 435 F.3d 1360 (Fed. Cir. 2010) (separate injunctive acts may support separate hypothetical negotiations)
- Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970) (Georgia-Pacific factors for determining reasonable royalty)
- Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858 (Fed. Cir. 1993) (date of first infringement tied to patent issuance and sale)
- Cybor Corp. v. FAS Techs., 138 F.3d 1448 (Fed. Cir. 1998) (claim construction is a matter of law de novo review)
- Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (U.S. 1997) (doctrine of equivalents standard)
- Harris Corp. v. Ericsson Inc., 417 F.3d 1241 (Fed. Cir. 2005) (start of infringement when patent issued and accused products sold)