8 April 2013Americas

US appeals court reverses £482 million Johnson & Johnson verdict

The US Court of Appeals for the Federal Circuit has reversed a $482 million jury decision against Johnson & Johnson subsidiary Cordis, ruling that its Cypher stent did not infringe a patent held by radiologist Bruce Saffran.

Saffran filed a lawsuit against Cordis in 2007 at a Texas district court, claiming that its stent—which is used to stop arteries around the heart clogging after they have been cleared of fat—infringed his patent for a stent used to treat tissue damage caused by bone fractures.

Both stents secrete drugs through mesh layers.

The district court conducted Markman proceedings and in 2011, the case was referred to a jury, which found Cordis liable for infringement and awarded Saffran $482 million in damages.

Cordis tried to have Saffran’s patent invalidated and his infringement claims dismissed, but the judge refused and $111 million in pre-judgment interest was added to the award, bringing the total to $593 million.

Cordis then appealed against the decision and disputed the district court’s claim construction.

In particular, Cordis disputed the court's interpretation of the “device” in Saffran’s patent claim and said it should be construed to mean a continuous sheet of mesh covering open mesh holes, which Cypher stents do not use.

Cordis also argued that macromolecular containment is a key feature of Saffran’s claim—something he argued cannot be provided by open mesh stents such as Cyphers—and that Saffran’s device has a drug coating affixed using hydolysable bonds while Cypher stents do not.

In a judgment published on Thursday, April 4, the Court of Appeals reversed the district court’s claim and agreed with Johnson that the term “device” should be construed to mean a continuous mesh sheet, excluding stents that have open mesh holes from infringement.

“While the district court was clearly correct that the term 'device' must possess all the 'limitations in the body of the claim,' the term itself requires construction beyond those limitations," said presiding Judge Lourie.

But the court’s decision was not unanimous, as circuit judges Moore and O’Malley both disagreed in part with Lourie’s decision: Moore backed the district court’s interpretation of “release means”, while O’Malley disagreed with Lourie’s interpretation of the term “device”.

Sandy Pound, a spokesperson for Johnson & Johnson, said the company is pleased with the court’s decision. But Paul Taskier, who acted as counsel to Saffran, said it was disappointing and that he is “considering an appropriate course of further action”.

David Gass, partner at Marshall, Gerstein & Borun LLP in Chicago, said the case highlights the importance of claim interpretation in patent litigation.

Ira Levy, partner at Goodwin Procter LLP in New York, said that there is always a risk that an appeals panel will come to a different conclusion than the district court in instances where the Federal Circuit looks at claim construction without deference to the conclusion reached by the trial judge.

“Here, even the three judges could not all agree on the proper construction of the claims, notwithstanding their final agreement that there was infringement. The Federal Circuit recently agreed to consider the amount of deference they gave to a lower court’s claim construction, en banc, in Lighting Ballast v Phillips ... [there needs to be] greater certainty around claim construction and the instruction juries are given in such cases."

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