Affirming the district court’s claim construction but holding that the court erred as a matter of law in failing to hold the patent obvious, the U.S. Court of Appeals for the Federal Circuit reversed the district court’s denial of judgment as a matter of law (JMOL).   Boston Scientific Scimed, Inc. v. Cordis Corporation, Case No. 08-1073 (Fed. Cir., Jan. 15, 2009) (Lourie, J.).

The patent-in-suit claims an expandable, drug-eluting stent with a coating that has a “non-thrombogenic” surface.   Boston Scientific sued Cordis Corporation and alleging that Cordis’ stent infringed.

The Federal Circuit reviewed the district court’s claim construction de novo and agreed with the lower court.  Relying on the language of the claims, the specification and the prosecution history, the Federal Circuit affirmed the construction of the term “non-thrombogenic” as “a material that does not promote thrombosis for a period of time that extends both during and after release of the biologically active material” and “long term” as “a period of time” that “extends both during and after release of the biologically active material.”  The Court held that it was not improper for the district court to refer to the medical dictionary definitions of the grammatically related terms “thrombogenic” and “thrombolytic” to define the term “non-thrombogenic.” Without expressly limiting the role of dictionary definitions to grammatically related terms, the Court held that the district court did not err in relying on such definitions “to inform the meaning of the claim terms.”

The Court also reviewed the finding of non-obviousness de novo and reversed the jury finding of non-obviousness upheld by the district court because one of the references rendered the asserted claim obvious.  One figure of the reference showed a stent made of a drug-eluting polymer with a barrier topcoat, referring to the stent and topcoat as separate layers, while another figure showed a metallic stent with a drug-eluting polymer coating identified with the same numeral as the drug-eluting polymer stent.  The Court reasoned that it would have been obvious to combine the two figures disclosing a drug-eluting polymer stent with a drug-free coat (but with the possibility of additional coats) and a metal stent with a drug-eluting polymer coat to arrive at the invention of the asserted claim.  The Court further explained that, although all of the limitations were found in two separate embodiments pictured side by side, the reference taught all of the limitations of the asserted claim and the record did not contain substantial evidence for the jury to conclude otherwise.  The Federal Circuit applied the reasoning of KSR, stating that “[i]f a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability,” and found that one of ordinary skill in the art would have been motivated without a leap of inventiveness to combine the two adjacent embodiments into a metal stent with two coating layers.

Practice Note:   Cordis’ effective trial graphic labeling the elements and illustrating how the two embodiments from the prior art reference would be combined was successful in persuading the Federal Circuit that the asserted claim was invalid.