Boston Scientific, Barnes, Bi-Mart: Intellectual Property

(This is a daily report on global news about patents, trademarks, copyright and other intellectual property topics.)

June 8 (Bloomberg) -- Boston Scientific Corp., the second- biggest maker of implanted heart devices, won an appeals court ruling in a patent-infringement case against Johnson & Johnson.

The U.S. Court of Appeals for the Federal Circuit in Washington yesterday upheld a lower court ruling that four patents on drug-coated stents owned by J&J's Cordis unit are invalid because the company failed to accurately describe the invention. The case is one of multiple disputes between J&J and Boston Scientific over stents, mesh tubes that prop open arteries.

The decision may also benefit Abbott Laboratories, which is being sued by Cordis over the same technology and had won a district court ruling last year that the patents were invalid. Abbott Park, Illinois-based Abbott makes Xience stents and licenses the Promus stent to Natick, Massachusetts-based Boston Scientific.

Cordis's Cypher stent uses rapamycin, also called sirolimus, to limit the growth of scar tissue that can cause the artery to narrow. Cordis's patents were for compounds derived from rapamycin, and the appeals court ruling centered on whether scientists had actually done research on derivatives as Cordis claimed or the company merely added language to the patent that any potential analog is covered.

The case stemmed from Boston Scientific lawsuits that sought rulings that the Promus stent wasn't infringing the patents. Promus uses the compound everolimus to prevent tissue growth.

Boston Scientific last year agreed to pay New Brunswick, New Jersey-based J&J $1.73 billion to end some of the other patent lawsuits between the companies over stent technology.

The case is Boston Scientific Corp. v. Johnson & Johnson, 2010-1230, 2010-1231; 2010-1233; and 2010-1234, U.S. Court of Appeals for the Federal Circuit (Washington). The lower court cases are Boston Scientific Corp. v. Johnson & Johnson, 07cv033, 07cv0348, 07cv409, 07cv765, all U.S. District Court for the District of Delaware (Wilmington).

U.K. IPO Asks Whether Existing Law Works for Generics Trials

The U.K.'s Intellectual Property Office is seeking comments on whether existing patent law provides enough protection for those seeking regulatory approval of generic drugs.

The office is consulting with a wide range of stakeholders and others, including pharmaceutical companies and their professional associations, biotech industry groups, intellectual property lawyers, companies that conduct clinical trials on behalf of others, individual law firms, technology-transfer organizations and research institutes.

The deadline for submitting comments to the office is July 31.

Barnes & Noble Sues to Block LSI Patent Royalty Claims on Nook

Barnes & Noble Inc., the largest U.S. bookstore chain, sued LSI Corp. to prevent the chipmaker from demanding patent royalties on sales of the Nook digital reader.

LSI notified Barnes & Noble on June 29, 2010, and at other times "its intention to pursue claims of infringement of the LSI patents," the New York-based bookseller said in a complaint filed June 6 in federal court in San Francisco.

The preemptive move reflects the legal headaches Barnes & Noble is facing since it began manufacturing a technology gadget in 2009, branching out from its traditional business as a retailer of books and other products. The company was named in 14 patent-infringement lawsuits last year, up from three in 2008, according to Bloomberg Law data. Including LSI, the company is involved in nine complaints so far this year.

"If you're a book company, you never get sued," said Robert Yoches, a patent lawyer at Finnegan Henderson in Washington who specializes in electronics cases. "Then you move online and you get sued a little bit. Now you've got an electronic box. As you add features, it becomes more like a computer."