Jan-Otto /
23 April 2018Americas

Federal Circuit revives laches patent suit

The US Court of Appeals for the Federal Circuit has revived a patent infringement dispute involving a former subsidiary of Johnson & Johnson (J&J) and Medinol, a company that focuses on cardiovascular intervention.

On Thursday, April 19, the Federal Circuit reignited the case, which involves a patent clash over a coronary stent filed by Medinol against Cordis (which is now owned by Cardinal Health) and J&J at the US District Court for the Southern District of New York in 2013.

Cordis and J&J asserted a defence of laches, relying on the Federal Circuit’s decision in AC Aukerman v RL Chaides Construction.

The parties agreed that the district court would hold a bench trial on the laches defence but, before the trial, the US Supreme Court granted certiorari in Petrella v Metro-Goldwyn Mayer to decide whether the defence of laches applied to copyright infringement.

In April 2014, the district court entered judgment that laches barred damages for Medinol’s claims of patent infringement.

One month later, the Supreme Court held that laches cannot be used in copyright disputes brought within the Copyright Act’s three-year statute of limitations.

In August 2014, Medinol brought a motion seeking relief from the final judgment, arguing that the Petrella decision was an intervening change in law that upended the laches framework.

But the New York court denied the motion, explaining that Aukerman remained controlling precedent despite Petrella.

Medinol appealed against the decision to the Federal Circuit, which held the appeal while it considered SCA Hygiene Products v First Quality Baby Products in an en banc case.

The Federal Circuit found that laches remained a viable defence in the patent context in SCA Hygiene. Medinol and Cordis moved for summary affirmance in light of SCA Hygiene, and the Federal Circuit granted the motion, affirming the district court’s ruling.

But the Supreme Court overturned the SCA Hygiene decision, finding that laches cannot be used as a defence to infringement that allegedly occurred within the relevant statutory six-year period.

Medinol’s petition for certiorari was granted and the Supreme Court then vacated the judgment and remanded the case to the Federal Circuit for further consideration.

On Thursday, the Federal Circuit vacated the judgment and remanded the case to the district court.

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