Boston Scientific Corporation v. Cordis Corporation

1:10-cv-00315 | D. Del. | Apr 28, 2011

|N THE UN|TED STATES D|STR|CT COURT FOR THE D|STR|CT OF DELAWARE BOSTON SC|ENT|F|C CORPORAT|ON and BOSTON SC|ENT|F|C SC|MED, |NC., ) ) ) ) P|aintiffs, ) ) v. ) Civ. No. 10-315-SLR ) CORD|S CORPORAT|ON, ) ) Defendant. ) MEMORANDUM ORDER At Wilmington thisjj> th day of April, 2011, having reviewed the recent letter submissions by Boston Scientific Corporation and Boston Scientific Scimed, lnc. (“BSC") (D.|. 164; D.|. 167) and Cordis Corporation (“Cordis”) (D.|. 163; D.|. 168); lT lS ORDERED that: 1. Admissibi|ity of evidence of reexamination proceedings. lt is generally not the court's practice to admit the reexamination record as trial evidence. (D.|. 164, Ex. B at 12:19-24) Rejections on reexamination are'not binding, and such evidence is almost always more prejudicial than probative. See S/'gram Sch/'nd/er Bete/'//`gungsgese//schaft mbH v. Cisco Sys., /nc., 726 F. Supp. 2d 396" date_filed="2010-07-26" court="D. Del." case_name="Sigram Schindler Beteiligungsgesellschaft v. Cisco Systems, Inc.">726 F. Supp. 2d 396, 415 n.31 (D. Del. 2010); see also Pres/'dio Components /nc. v. Am. Technica/ Ceramics Corp., 2009 WL 3822694, at *2 (S.D. Cal. Nov. 13, 2009) (exc|uding evidence of reexamination proceedings under Fed. R. Evid. 403 as unfairly prejudicial on the issue of willfulness). lndeed, the parties agree that evidence of the reexamination proceedings would be unduly prejudicial and confusing to the jury. (D.|. 163 at 2; D.|. 164 at 2-3) Therefore, evidence of the reexamination shall be excluded pursuant to Federal Rule of Evidence 403. 2. Summary judgment on the issue of willfulness. ln consideration of Cordis’ speaking motion for summary judgment of non-willfulness, the court concludes that neither the record nor the case law supports a grant of summary judgment of non- willfulness based on the reexamination proceedings. [T]o establish willful infringement a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. The state of mind of the accused infringer is not relevant to this objective inquiry. lf this threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer. ln re Seagate Tech., LLC, 497 F.3d 1360" date_filed="2007-08-20" court="Fed. Cir." case_name="In Re Seagate Technology, LLC">497 F.3d 1360, 1371 (Fed. Cir. 2007) (citation omitted). 3. ln this action, the record reflects that Cordis had knowledge of United States Patent No. 5,922,021 (“the ‘021 patent”) prior to its infringement Specifically, claim 36 of the ‘021 patent was also at issue in the 03-027 case between BSC and Cordis, in which the jury ruled in favor of BSC with respect to validity and infringement (D.|. 164 at 2) The jury’s ruling was affirmed by the Federal Circuit in March 2009, resulting in a final judgment which precluded Cordis from continuing to challenge the validity of claim 36. (ld.) Cordis did not launch the 2.25 mm Cypher stent until September 2009 and did not initiate the reexamination proceeding until October 13, 2009. (ld. at 3) Based on these undisputed facts, the court declines to grant summary judgment of non-willfulness in favor of Cordis. 4. lt is well-established that the grant of a request for reexamination does not necessarily establish a likelihood of patent invalidity. Hoechst Ce/anese Corp. v. BP Chems. Ltd., 78 F.3d 1575" date_filed="1996-03-19" court="Fed. Cir." case_name="Hoechst Celanese Corporation v. Bp Chemicals Limited and Sterling Chemicals, Inc.">78 F.3d 1575, 1584 (Fed. Cir. 1996) (citing Acoustica/ Design, lnc. v. ControlE/ecs. Co., 932 F.2d 939" date_filed="1991-05-01" court="Fed. Cir." case_name="Acoustical Design, Inc. v. Control Electronics Company, Inc., Insul-Art Acoustics Corp., Jack Leonard, and Harold Goldstein">932 F.2d 939, 942 (Fed. Cir. 1991)). ln fact, this court has held that “[e]vidence relating to reexaminations is not necessarily ‘essential’ or ‘basic’ to the willfulness issue." Power/ntegrations, /nc. v. Fairchi/d Semiconductor/nt’l, /nc., _ F. Supp. 2d _, Civ. No. 04-1371-LF’Sl 2011 WL 166197, at *5 (D. Del. Jan. 19, 2011). The court concludes that evidence of the reexamination proceeding alone does not provide Cordis with evidence of invalidity sufficient to raise a close question regarding willfulness based on the record presented in this case. See Krippe/z v. Ford Motor Co., 675 F. Supp. 2d 81, 894-95 (N.D. lll. 2009) (finding plaintiff’s request for reexamination irrelevant to willfulness despite interim rejections). 5. The court’s decision to exclude evidence of the reexamination proceedings and deny Cordis’ speaking motion for summary judgment of non-willfulness necessitates a grant of summary judgment in favor of BSC on the issue of willfulness. Cordis concedes that the only evidence in support of its argument for a finding of non- willfulness is the evidence regarding the reexamination proceedings, admitting that “if the Court decides instead to exclude the reexamination evidence under Fed. R. Evid. 403, as BSC requests, then Cordis has no choice but to consent to entry of summary judgment for BSC on willfulness." (D.|. 163 at 2; D.l. 168 at 1) Therefore, the court shall enter summary judgment in favor of BSC with respect to willfulness.1 1Because willfulness has been addressed, evidence of the 03-027 case, at the very least, would seem to now be irrelevant 3 6. Reservation of rights. Cordis reserves its right to appeal the exclusion of the reexamination evidence. United §tat$l District Judge