Patent is invalid for lack of written description
Boston Scientific Corporation, et al. v. Johnson & Johnson, Inc., et al., Civ. No.07-333-SLR; Civ. No. 07-348-SLR; Civ. No. 07-409-SLR; Civ. No. 07-765-SLR, January 20, 2010.
Robinson, J. Plaintiff’s motion for summary judgment of invalidity under §112 is granted. Plaintiff’s motion for summary judgment of noninfringement and invalidity under § 103 are denied. Defendant’s motion for summary judgment of infringement is also denied.
The patents-in-suit relate to drug-eluting coronary stents which are used in the treatment of coronary artery disease. Plaintiff sells the alleged infringing product, the Promus stent. Because the Court has declined to adopt each of plaintiff’s proffered claim definitions, plaintiff’s motion for summary judgment of non-infringement is denied. Next the Court considers plaintiff’s claim that the ‘3286, ‘7286 and ‘473 patents (the “1997 patents”) are obvious. Plaintiff failed to cite any expert testimony in support of its motion. The Court notes that plaintiff’s strategic decision has hindered its position as the Court finds that plaintiff’s evidence does not rise to the level of clear and convincing and denies the motion. Plaintiff’s motion for summary judgment that the asserted claims of the patents-in-suit are invalid for nonenablement is denied. The Court finds that the 1997 and ‘662 patents’ specifications are sufficiently definite. As for the written descriptions for the 1997 patents, the Court notes that the precise mechanism of rapamycin was still under investigation at the time that the patents were filed. Besides the requirements that the compounds be structurally similar to rapamycin, the patents’ specifications provide no further guidance regarding the claimed analogs. Defendant can point to no evidence that the inventors had possession of the full scope of the invention as claimed. Rather defendants simply contend that a person of ordinary skill in the art could use the disclosed functionality to identify acceptable analogs. Therefore, the Court finds the written description requirement to be lacking. Similarly, having found that there is no direction or guidance disclosed in the patents and no working examples, the claims are moderately broad, the invention concerns a very complex chemical and biochemical art germane to highly skilled cardiologists and that the patents were filed on the heels of a decade marked by failed attempts to reduce restenosis, the Court concludes that the limitations at issues are not enabled. Similarly, the ‘662 patent specification contains no distinguishing information regarding the identity of the claimed analogs. Thus, the ‘662 patent specification’s description of the claimed analogs’ function does not suffice. The inventors were required to describe at least one representative macrocyclic triene analog. Having failed to do so, the ‘662 patent is invalid for lack of written description. The Court does not consider enablement for the ‘662 patent.
