Free Letter - District Court of Delaware - Delaware

Case 1 :98-cv-00197-SLR Document 332 Filed 07/1 1/2007 Page 1 of 2
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ATTORNEYS AND COUNSELLOR5 AT LAW TE!-EPH¤NE
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500 DELAWARE AVENUE
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WILMINGTON, DELAWARE 19899
July 11, 2007
The Honorable Sue L. Robinson VIA ELECTRONIC FILING
United States District Court
844 King Street
Wilmington, Delaware 19801
Re: Cordis Corporation v. Boston Scientific Corporation., et al.,
C.A. No. 98-197-SLR
Dear Judge Robinson:
Cordis writes to bring to Your Honor's attention a recent Federal Circuit decision that
bears on the inequitable conduct issues that are before the Court on remand from the Federal
Circuit. See D.I. Nos. 324, 326-328.
BSC has argued on remand that the "cure" standard of Rohm & Haas Co. v. Cggstal
Chem. Co., 722 F.2d 1556 (Fed. Cir. 1983) is fully applicable to cases where the inequitable
conduct consists of a non-disclosure, and further argued that the disclosure of Hillstead during
prosecution of the Fischell '3 70 patent was an insufficient "cure" under Rohm because the
applicants did not specifically call attention to that reference. g D.I. 324 at 24; D.l. 328 at 13-
14.
The recent decision in Young v. Lumenis, Inc, --- F.3d ---, 2007 WL 1827845 (Fed. Cir.
June 27, 2007) rejects these arguments. In Young, the Federal Circuit distinguished Rohm on
the grounds that it involved a false affidavit, rather than a non-disclosure, and fiirther held that
the cure for a prior omission is a timely submission. Young, at *10-11. On both points, the
Federal Circuit's reasoning is consistent with Cordis' position in the above case and rejects the
position advocated by BSC. As the Federal Circuit explained, "[t]he essence of the duty of
disclosure is to get relevant information before an examiner in time for him to act on it." Id, at
*10.
We thank the Court for its time and attention to this matter.
Respectfully,
/s/ Steven J Balick
Steven J. Balick

Case 1:98-cv-00197-SLR Document 332 Filed 07/11/2007 Page 2 of 2
The Honorable Sue L. Robinson
July ll, 2007
Page 2
SJB: dmf
182154.1
c: Gregory L. Diskant, Esquire (via electronic mail)
J osy W. Ingersoll, Esquire (via electronic mail)
George E. Badenoch, Esquire (via electronic mail)