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January 15, 2009


Boston Scientific and Johnson & Johnson have a long-running battle of heart stent patents. Both have had victories in their war, which started in 1997. Today the victory was J&J's, overturning a unfavorable jury verdict, as Obzilla, the patent grim reaper, takes another victim on appeal.

Boston Scientific v. Cordis and Johnson & Johnson (CAFC 2008-1073)

Claim 8 of 6,120,536 was asserted.

The CAFC affirmed the trial court's claim construction.

Obzilla the magician turns facts into law, emboldening the CAFC to de novo wave its wand, without deference.

"We review the jury's conclusions on obviousness, a question of law, without deference, and the underlying findings of fact, whether explicit or implicit within the verdict, for substantial evidence." Johns Hopkins Univ. v. Datascope Corp., 543 F.3d 1342, 1345 (Fed. Cir. 2008) (quotation marks omitted). While a jury may render a decision on a question of obviousness when it is considering any underlying fact questions, see id., obviousness is ultimately a question of law that this court reviews de novo. When we consider that, even in light of a jury's findings of fact, the references demonstrate an invention to have been obvious, we may reverse its obviousness determination. See Richardson-Vicks, Inc. v. Upjohn Co., 122 F.3d 1476, 1479 (Fed. Cir. 1997) ("[I]n re-creating the facts as they may have been found by the jury, and in applying the Graham factors to the case, we assess the record evidence in the light most favorable to the verdict winner . . . , though this does not mean that we are free to abdicate our role as the ultimate decision maker on the question of obviousness. That decision remains within our province." (citation omitted)). That is the case here.

Obzilla plays invalidation as a game of hand grenades: close is close enough to kill. The single prior art reference, Wolff, had the claimed features if two embodiments were put together.

("That the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious. This is especially true because the claimed composition is used for the identical purpose taught by the prior art."); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985)

As we have explained, Wolff teaches all of the limitations of claim 8, and the record did not contain substantial evidence for the jury to conclude otherwise. The only qualification to this statement of fact is that all of the limitations are found in two separate embodiments pictured side by side in the patent, not in one embodiment. However, "[i]f a person of ordinary skill can implement a predictable variation, ยง 103 likely bars its patentability." KSR, 127 S. Ct. at 1740... Combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.

"Where . . . the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment [or JMOL] is appropriate." KSR, 127 S. Ct. at 1745-46; see Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000) ("[T]he standard for granting summary judgment mirrors the standard for judgment as a matter of law, such that the inquiry under each is the same." (quotations omitted)).


Losing at trial always means another bite at the apple on appeal.

Boston Scientific, on hook for a previous $700 million royalty payment, ordered last September, has pledged part of a $2 billion credit line to cover its bets until its appeal comes a cropper.

Posted by Patent Hawk at January 15, 2009 6:34 PM | Prior Art


Your foreign readers will be curious to learn from other commentators how a reasonable jury, by which I mean one blessed with even a marginally above zero amount of common sense, and cantankerous enough to deploy it, could ever have come to the idea that this claim is anything but obvious. It is distressing to an Englishman, to see time and again how the fact whether something is obvious only gets decided when the case gets to the appeal instance (And before anybody pipes up, I do know that the CAFC has decided that what's obvious is a matter of law, ie, its business. Bonkers, or what?)

Posted by: MaxDrei at January 16, 2009 12:49 AM

Have read the Decision now. No wonder the jury got confused. Lots of mileage (dust stirred up, waters muddied) with the abstruse technical term "non-thrombogenic". As if the PHOSITA really was in a dilemma: I could coat my stent with a coating that will cause blood to clot. But, I wonder. Is that wise? I guess not. Therefore, on reflection, I will coat with something that doesn't cause blood to clot. Phew, that was hard to decide. I think I will file a patent on it.

Suppose there was no "Presumption of Validity". Would juries then still defer to the judgement of the overworked, pencil-pushing, miles from the lab, productivity-driven, litigation-ignorant, Govt-employed individual who (the record shows) had entered Wolff on a list of docs already "considered". Absent that presumption, would it still have felt compelled to swallow the idea that everything inside the scope of the claim is so different from what the Wolff disclosure gifts to its intelligent specialised reader (we're not talking PTO Exr here) that such a reader would find it "inventive" over that disclosure. I think not, and nor does the CAFC. Then again, maybe what swung it for the jury was "secondary factors" ie the evidence of the failure of Medtronic to find a usable and useful coating drug to put on their Wolff stent somehow turns the routine use of a diffusion-limiting topcoat into something that is not "obvious" to the intelligent specialist designer of stent coatings.

Lawyers arguing that claims are obvious now have more scope to indulge their advocacy skills. Don't know this Obzilla character. But he seems like an straightforward,right-thinking sort of guy.

Posted by: MaxDrei at January 16, 2009 5:17 AM


If I read the decision correctly, what we have here is what we call in the U.S. a "102.5" issue in that the teachings being combined for obviousness purposes are in the same reference. That's real hard for a patentee to refute, unless there's something in that reference which suggests those teachings can't be combined (i.e., a teaching away argument.

Posted by: EG at January 16, 2009 9:39 AM

So,EG, would you say that the jury verdict was aberrant? Or does this sort of thing happen so often that it would be wrong to characterize it as an aberration?

Suppose one's claimed combination of Figs 3B and 4 of the cited reference US patent (Wolff) delivers a nice result. Suppose one argues that it is in fact the Best Mode (look how much commercial success we have had), point out that it's not disclosed by Wolff, and argue that Wolff did not even mention it, even though he ought to have done, since it's the "Best Mode". Wolff's non-perception of what was actually his "Best Mode" proves that it wasn't "obvious" to Wolff, and, hey, Wolff's an inventive person. Thanks to Best Mode, what's novel is also non-obvious, and no implausible "teaching away" nonsense needed. Don't worry, I'm only teasing.

Posted by: MaxDrei at January 16, 2009 10:38 AM


Not sure why the jury decided the patent claims at issue were unobvious. It may have depended on how the judge phrased the jury instruction on the obviousness issue.

As you know, the point you brought about Wolff missing the connection between the adjacent embodiments/drawing figures came up on Patently-O. Even though Wolff may have missed the connection, in the context of this particular invention, including no "teaching away," it's going to hard to argue against obvious (and you might even argue lack of novelty under 102 as all features of the claimed invention are in the same reference, albeit different portions of that reference).

Posted by: EG at January 16, 2009 11:09 AM

Hard maybe, EG, but nevertheless the jury bought in to that argument, no? Isn't it cases like this which explain the rise of the mantra "Reject, reject, reject"?

Posted by: MaxDrei at January 16, 2009 11:39 AM


NOTHING explains (or better put - legitamizes) the mantra of "reject, reject, reject".

That mantra is an excuse and coverup of the ineptitude of the Office management. I would expect someone of your stature to be able to see that, and frankly it is very disappointing to see you actually provide that as a rationale explanation (even given your propensity to spike debate with off the wall remarks).

Besides, jury decisions are after the fact when it comes to patent prosecution. If you are saying that the Office wants a second shot at not giving a "dumb" patent, there are other processes in place. If your suggested recommendation for dealing with granting "dumb" patents is to "reject, reject, reject", then your appreciation for what the Law (already in place) is for, is sadly lacking. The problem is NOT the law. The problem is in the execution of the Law by the Office. "Reject, reject, reject' is STILL not executing to the Law and is NO replacement for actually performing to the Law.

This reasoning should be transparent as it can just as easily apply to the Law on your side of the pond.

Posted by: Noise above Law at January 16, 2009 4:00 PM

"...and you might even argue lack of novelty under 102 as all features of the claimed invention are in the same reference, albeit different portions of that reference"

No you may not argue that. The standard of anticipation is identity of invention. In other words, the reference has to disclose the identical invention that is claimed.

Wolff does not disclose the identical invention claimed. Wolff does not anticipate.

Not sure what the PTO was doing in this one. Wolff was of record during prosecution. It should have been applied.

Posted by: JD at January 16, 2009 4:08 PM

Hawk, looking at the two offerings immediately above, what can somebody of my "stature" add? That the PTO should have given more attention to Wolff? That such attention might have resulted in a rejection, based on Wolff? That the experience of this case might leave the PTO with a greater resolution to find such objections, next time around and, in so doing, reduce the cost to the American public of life-saving stents? That, actually, the mantra "R, R, R" is shorthand for "Concentrate, concentrate, concentrate"?

Posted by: MaxDrei at January 17, 2009 7:29 AM

Patent Hawk, If I may answer oneof the questions from MaxDrei...

That, actually, the mantra "R, R, R" is shorthand for "Concentrate, concentrate, concentrate"?

The mantra "R, R, R" is shorthand for crap. Remove the mantra from your head.

Rather than "Concentrate, concentrate, concentrate", I would suggest the following:

Know the purpose of the Office - Know the Law - Apply the Law.

Posted by: Noise above Law at January 17, 2009 1:17 PM

Noise, maybe we have more common ground than we think. The function of the PTO is to examine apps, and issue patents, but all the while subject to the Constitutional imperative to Promote the Progress. Issuing every claim that's filed will Demote the Progress. So, some of those claims must be rejected, rejected, rejected, every time their substance comes up again, again, again, dressed up differently, in one continuing application after another. I find it hard to believe that the PTO harms the national interest, by rejecting meritorious claims, directed to subject matter in a field of real technology, from an all-American applicant. Indeed, US clients are still showing me recently issued US patents, to encourage me to get on and get to issue the sister EPO case. Given the recent caselaw (the Law, right) it's hardly surprising that the PTO is hesitant, on claims to methods of doing business.

Posted by: MaxDrei at January 18, 2009 2:55 AM

"Issuing every claim that's filed will Demote the Progress."
- this has a blatant anti-patent ring to it.


The point of the Law is that neither "every claim" nor "no claim", should issue just because. Rather, ALL claims should be filtered by the Law and those that merit patents thus be granted. I am NOT advocating free and easy patents for any and all claims. However, I am also ardently advocating against the Reject-Reject-Reject mantra, as that mantra simply does not follow the Law.

The Law is being twisted against the very purpose of the Office in order for the Office to (mis)manage its workload. The mantra is a sign of this travesty, not the cause. Whether methods of doing business are/are not a 'real' technology is NOT what the Office should be dabbling in. The Supremes have made it abundantly clear that there is no such thing as a business method exception to the patent law. The Office has been pushing its agenda and over-reaching its authority in Rule-making attempts and now are acting in the void that the cowardly CAFC has created in the ill-written Bilski case. Undoubtedly, you have seen my rant on patently-o where I provide the (still-valid) case law from Alappat.

The very point of the rant is that the Office IS rejecting meritous claims or at the very least, NOT focusing on properly applying the Law by spending too much time trying to take control of the law for their agenda rather than focusing on getting the examiners proficient and professional in applying the Law as it is. The Noise being created is but a smokescreen preventing real reform from focusing on what the real problem is.

Posted by: Noise above Law at January 18, 2009 8:45 AM

I agree that rejecting claims that meet the statutory requirements is not what the PTO should be doing. Trouble is, if the courts signal to the PTO that 103 hasn't been applied rigorously enough, but fail to prescribe anything useful by way of an obviousness test, what's a young, inexperienced, well-meaning and conscientious Exr to do, after management has told her where her duty to the nation lies? No wonder everybody's confused and frustrated. Once a teacher has lost the respect of a classroom of schoolchildren, how to recover control? New teacher? But who's the teacher here?

Posted by: MaxDrei at January 19, 2009 12:01 AM

The teacher here is the Law.

Let's return to the new mantra:
Know the purpose of the Office - Know the Law - Apply the Law.

This would include discerning when your management (and its instructions and agenda) is NOT following the Law. The Examiners are unionized, they can fight back.

Posted by: Noise above Law at January 19, 2009 12:19 AM

You know, something tells me that, as from tomorrow, there will be somebody at the top 8for the first time in 8 years) who signals clearly, to those below him, all the way down to individual PTO Examiners, that the Rule of Law is to be obeyed. I'm astonished that you put your faith in a Trades Union to uphold the Rule of Law. What about the lawyers who advise the White House?

But that still leaves as a problem the fuzziness of the law. I see that Paul Michel's Committee (see Dennis Crouch blog on the Case Management 542 page opus) couldn't reach a consensus, on how to brief the jury about obviousness.

Posted by: MaxDrei at January 19, 2009 4:09 AM