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Case 1 :98-cv-00197-SLR Document 334 Filed 09/15/2008 Page 1 of 3
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
CORDIS CORPORATION, )
Plaintiff, )
) C.A. No. 98-197-SLR
v. )
)
BOSTON SCIENTIFIC CORPORATION, and )
SCIMED LIFE SYSTEMS, INC. )
Defendants. )
CORDIS'S NOTICE OF SUPPLEMENTAL AUTHORITY
In connection with the proposed Findings of Fact and Conclusions of Law on
inequitable conduct (D.I. 326 and 327) that Cordis previously submitted pursuant to the request
made by this Court during a teleconference on September l2, 2006, Cordis respectfully brings to
the Court's attention, pursuant to Local Rule 7. l .2(b), the recent decision by the U.S. Court of
Appeals for the Federal Circuit in Star Scientjc, [nc. v. RJ Reynolds Tobacco Co., 2008 VVL
3891543 (Fed. Cir. Aug. 25, 2008).
In Star Scientjc, the Federal Circuit reversed a finding of inequitable conduct as
clearly erroneous and emphasized that the "need to strictly enforce the burden of proof and
elevated standard of proof in the inequitable conduct context is paramount because the penalty
for inequitable conduct is so severe, the loss of the entire patent even where every claim meets
every requirement of patentability." Id at *6.
In Star Scientjc, as in this case, the inventor testified that he was unaware of the
allegedly withheld document until after the issuance of the patent in question. Id at 8, D.I. 255
at 83. As in Star Scientjc, record evidence shows a reasonable — and innocent- explanation.
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Case 1:98-cv-00197-SLR Document 334 Filed 09/15/2008 Page 2 of 3
Contemporaneous documentary evidence, discussed in Cordis's Proposed Findings and
Conclusions (D.I. 326 at 6), demonstrates that Dr. Fischell received Hillstead and other
references cited in the European Office Action with a cover letter from his attorney that singled
out a different reference (Sgro) as the "only reference which is stated as being particularly
relevant to claim l", in reliance on his attorney's letter, Dr. Fischell cited Sgro to the PTO and
did not look at Hillstead until years later — after the '312 patent issued.
As this documentary evidence shows, there is a reasonable explanation for the
non-disclosure that is at least as plausible as BSC's assertion that Hillstead was withheld
purposefully, with an intent to deceive. As the Federal Circuit stated in Star Sctentjc,
"'[w]henever evidence proffered to show intent is susceptible of multiple reasonable
inferences, a district court clearly errs in overlooking one inference in favor or another equally
reasonable inference."' [al at *7, quoting Scanner Techs. Corp. v. [COS Wston Sys. Corp., 528
F.3d 1365, 1376 (Fed. Cir. 2008).
ASHBY & GEDDES
/s/ Steven J Balick
Steven J. Balick (1.D. # 2114)
John G. Day (1.D. # 2403)
Tiffany Geyer Lydon (1.D. # 3950)
500 Delaware Avenue, 8th Floor
P.O. Box 1150
Wilmington, DE 19899
(302) 654-1888
[email protected]
jday@ashby-geddescom
tlydon@ashby-geddescom
Attorneys for Platntw C ora'is Corporation
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Case 1 :98-cv-00197-SLR Document 334 Filed 09/15/2008 Page 3 of 3
Of Counsel 1
Gregory K. Diskant
Eugene M. Gelernter
Scott B. Howard
Irena Royzman
PATrERsoN BELKNAP WEBB & TYLER LLP
1133 Avenue ofthe Americas
New York, NY 10036
Dated: September 15, 2008
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