Case Number: 1:13-cv-01408-SAS (Dkt. 64)
Having bifurcated trial of Medinol’s infringement claims against Cordis for Cordis’s Cypher and Cypher Select stents, the court found that laches presents a complete defense and so dismissed the case with prejudice.
The suit involved four “Pinchasik Patents” (U.S. Patents Nos. 5,980,552 (“Articulated stent“), 6,059,811 (“same”), 6,589,276 (“same”), and 6,875,228 (“same”). The Pinchasik Patents are continuations of a patent from which three continuations-in-part issued (the “Israel Patents”). Medinol characterized the Pinchasik Patents as claiming articulated stents, and the Israel Patents as claiming uniformly flexible stents.
The court found that Medinol had unreasonably and inexcusably delayed suit by periods ranging from 5 years, 10 months, and 5 days for the most recently issued patent, and that it was within the court’s discretion to find a shorter-than-6-years delay unreasonable. (The court excused a portion of plaintiff’s delay because of related litigation and negotiations.)
The court also found that Cordis suffered economic prejudice. Rather than speculating as to what “Cordis would or would not have done” if faced with an earlier suit, the court said it looked at what Cordis actually did. Cordis had entered into a multi-year business relationship with Medinol, which the court said it would not have done if it knew that Medinol was “clinging to a Pinchasik lawsuit in the event that its business relationship deteriorated.” The court said that Medinol has given Cordis no warning that it possessed claims with respect to its Pinchasik patents: “Medinol first set out the Pinchasik claims for nearly seven years, suing Cordis on other patents around the world but never asserting these claims.” Ultimately, the court said that Medinol’s delay deprived Cordis of an opportunity to modify its business strategies, and so prejudiced Cordis economically.